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Full text of "[Decisions of the Commissioner for Trademarks] / Commissioner for Trademarks."

■mi 



1873-1880 



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INDEX. 



Ashton's Factory Pilled 71 

Arrangement of v/ords and figures 8P. 

Aniber C4 

i- 
Agency's Favorite 21SJ. 

Alexandre 269 

A paper strip or band 207 

American 118 

A paclcage of tlie color of brass 135 

Anti-craclc 225 

A marJi in the fabric 182 

Ansatz 189 

•Alf & 'Alf 267 

Alternat ive form 205 

Blunt Head- 284 

Brandywine 166 

Bombay 222 

Burglar Alarm 36 

Boston Dental Asso. 16 



B 



Cream Coated Cure 171 

Configuratloi'i of can 86 

Covert Snap 198 

Carbon 216 

Class of merchandise 169, 107 

Columbia 136 

California Magic 212 

Colorable variation (AncocX's India Rubber 
Porous Plaster. Reference Allcock's P.P.) 13 

Cushioned Axle 152 

Cachemire - Iviilano 124 

Club Room 218 

Carlisle 273, 274, 277 

D 

Descriptive symbols 282 

Descriptive matter 195 

Duplex 104 

Dublin 113 

Dr. Karter's Medicine ■ --228 

Dr. Piper's Paint 18 

Electric Light 191, 211 

Egg Macaroni 78 

Eostaeine 193 

Everlasting 192 



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Embraces several classes of raerchandise 40 

% 

^ English Crown Gin 84 

Edciystone ■ 66 



Fac simile 129 

Form 173 

Fancy Snow llhite • 149 

Foutz & Red LalDel 262 

Fish 80 

Franco-American 250 

Fruit Butter 62 

Figure of a Bull or Steer 154 

Formalities 133 



Gi-ison 260 

Gandy's Belting 285 

■g?"|3 Galvanized hoops placed on a barrel of dark 

J color 52 



E 



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Good Samaritan 93 

Genl, Geo. Washington, Exhibition Watch 

1876, Philadelphia 29 

Green Label 81 

Golden Star 85 

Great American 77 

Gold Prize 201 



Haxall 58 

Hemacite 179 

Hibernicon 151 



Incomparable & 227 

Interference 70 

Intention to adopt 22 

India Rubber Co. — Goodyear 46 

"I .R. « : 53 



H 



Jug 203 



K 

Kitchen Hlneral 153 

Key V/est & picture 25 

L 

Looped flourish with name 257 

Lone Jacli 281 

'^- Loxa — 219 

Leibig*s 15 

Label Order May 19, 1879 ~ 217 

Label Decision 263 

la fabric de tobaccos 38 

M 

Mot* Sc Chandon — Label 146 

McCreedy's Com Solvent 257 

I 
I 
k 

Matter for Design Patent ^^ 134 

Masonic 223, 236 

Monroe & Go.,JaraeB, Baltimore, Md. 155 

N 

New matter 60, 68, 142,109, 3! 

No Brand 87 



1^ Nicots ^ 105 



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Olelne 235 

One Length Brand 83 

Orcutt's Salt Rhuen Cure <?- Monogram 42 

Old Judge 253, 265 

Puffer 172 

Prize Medal 200 

Premium 291 

Perfect BaKing PoY/der 44 

Peiloppocliarm 176 

Pure Excelsior Jevrelry 271 

Parker's 279 

Peerless 106 

Perforated Paper 121 

Plug inserted in the bung of a cask 21 

Plymouth 162 

Questions of form^ 162 

Queen ■ • 209 



£ 



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Roger's Consuinptivc Cure G7, 156 r 

Rubber Roofing 75 

) Return of fees 120 

Red color in oil 95 

Rising Sun 112 

Refunding Label fees 55 

Sphynx o: letters S. R. L. 216*^ 

Standard 231 

i Subject -natter for Label 50, 89 

Star & Crescent 110 

i> Sterling 226 

Soft Capsules 119 

Series of transfer marlcs 127 

Subject-matter for Trade-Marks 270, 33, 264 

Shake 74 

Superb 238 

Straps of a box for cigars 174 

System Renovator 177 

Sillery Mouseux Superieur 158 

Signal Service Barometer 24 

^ Scratch my back ■ 137 



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Sawyer's Blue 20 

D • o • S • ——--———— — — — ——232 

Stylographic /£:Cl-._/i^l_- . 220 

Salvator 239, 240, 249 

Spencer, J.E. Standard Lathes & picture 9 



There's Money in it 202 

Tasteless 54 

1 

TacXless 103 

Two birds 151 

The Ragsdale 61 

Tuttle 41 

Turner's Synap Desert Sauce 51 

Thin bade 38 



Utility ■ 94 



Vitalized 258 

Victoria Regia 34 



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White 224 



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I 

i 

APPLICATION 
of 
JO.HN E. SPENC.ER, 

Decided July 15. 1075 . 

Recorded Vol. 14, Pap;e 152 . 

oOo 

LEGGET5?, COlvEilGSIONER: 

Applicant says that his trade mark consists of a picture 
of a lathe "having the overhead counter-shaft laid across the "bed 
of the lathe," with the words "John E. Spencer" over it and the 
words "Standard Lathes" under it. The question is whether this 
alleged trade-mark is sufficiently distinctive in character to dis- 
tinguish applicant's lathes from those of other manufacturers. 

It is common for manufacturers to advertise their prod- 
ucts by means of pictures representing them printed in public 
journals, upon business cards, and upon the v/rappers of small ar- 
ticles, together with the name of the manufacturer or dealer, and 
the name of the article. This is true of lathes, as may be seen 
by consulting almost any number of the Iron Age — or other simi- 
lar journals. 

There is nothing more than this in this trade-mark. The 
overhead shaft is an essential part of the lathe. It is sold with 
the lathe and is usually- provided with a cone-band-v/heel, and a 

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J.E.Spencer, Shoet -2- 
fast and loose pulley sucli as applicant's picture exhibits. The 
words "Standard Lathes" are not sufficient in combination with 
this representation of a lathe to constitute the whole a trade- 
mark at coimnon law, because they are descriptive of quality, and 
besides are in comnion use as descriptive of the quality of lathes 
made for turning nuts and screws of a given standard. 

The decision of the Examiner of Trade Marks is affirmed. 



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AZZLI.C.ATiO.N 
Of 
^ £• J. 1 A ^ ^ N & ^ 0.. , 



N Decided Poo. 22, 1075 . 

R ecorded Vol. 14, Fap^e 285 . 

oOo 

LEGGETT , C OlEII SSI ONER : 

I ail clearly of the opinion that this alleged trade- 
mark is only a colorable variation from that cited "by the Examiner, 
and should not therefore be registered. 

His decision refusing registry is affirmed. 



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APPL1C.ATX0N 
Of 
ROlAk 1AK1NG._P.0.1VDER ^^. , 

Decided April 11,1874 . 

Recorded Vol, 14, P ar^e 590 . 

oOo 

THACIIER, ACTING COLCII SSI ONER: 

j The essential feature of the trade marl; for which regis- 
tration is asked, is the word "Liebig's". This is a Yiell known 
tern which has "been extensively used, in this and other countries, 
for the purpose of distinguishing certain preparations put up un- 
der receipts of the famous chemist. Baron Liebig. There is no 
pretense that the extracts manufactured by the company, applicant 
in this case, are preparations of Baron Liebig. But the use of 
this term will convey this idea to the public, and to this extent 
is deceptive in nature. For this reason, if no other, it is not a 
proper trade mark. 

The deicision of the Examiner is affirraed. 



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APPLiC.ATI.^11 

Of 
i A R 1 -Is. ^ N Y D E R,_ 

Decided May 5, 1074 . 

Recorded Vol. / / /. Pap:e 4i; 



■oOo- 



LEGGETT, COLDil SSI ONER: 

The examiner objects to the registration in this case 
for two reasons: first, that it is either descri'ptive or deceptive/ 
and second, that it is a marlv not designed for use upon any ^ind 
of merchandise. 

It seems that the party has started business in Chicago 
and designates herself "Boston Dental Association". The object 
of this title, unless the applicant represents an association in 
Boston, is evidently designed to mislead the public by inducing it 
to give to her the confidence that would naturally be rendered to 
such an association of persons. It certainly would be improper 
for the Goverrjnent to lend its aid to this questionable kind of 
business. But without extending this objection, which certainly 
should be enough to defeat the application. It is suffitjient to 
say that the Examiner's objections are well taken. 

If the title does not represent an aosociation, it is 



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M.E.Snyder, Sheet -2- 
deceptive, and should not have the sanction of legal registry. If 
it does ae^ designate an association, then it is descriptive and 
cannot be claimed as a legal trade-mark. 

The second clause, under section 77 of tlie Patent-Law, 
says "that the applicant shall cause to be recorded in the Patent 
"Office the class of merchandise and the particular description of 
"goods comprised in stich class by which the trade mark has been or 
"is intended to be appropriated." 

The applicant fails to designate any goods or iierchan- 
dise of any kind, which is to bear the mark of "Boston rental As- 
sociation". She simply claims ot for use in advertising in news- 
papers and on cards, and for stenciling on fences, rocks, 5:c. 



The decision of the examiner is affirmed. 



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APPLl^ATlCili 
of 
JEREMIAH R. LAWREliC.E 

recidGd Jan. 4, 1875 > 

Rec orded Vol. IG, Pap,G 265 . 

oOo 

SPEAR, ACTITTG COlvn.riGGICITIJR: 

The narX prosentod for registration is "Dr. Pipers' 
Paint". The name of the article of course cani'iot of itself con- 
stitute a trade-mark, and it is equally plain that the law pro- 
hibits the registration of a mere name of a person as a trade- 
mark. It does not api' ear ever to have been held that a mere name 
as that of John Smith could be a trade-mark though parts of proper 
names have been so held as in Howe vs. I-Iowe Get-Xring Machine Co. 
(Cox Trade-IIark cases), where the word "Howe" was taken alone be- 
ing an arbitrarily chosen part of a name. Now the word "Piper" is 
such part of a name, but the title is a coinmon one and is coimnonly 
substituted for the Christian name of a person, so that the title 
with the surname is commonly used as the full name or the mere 
name of the person to whom it belongs. 

The evident intent of the law is that a mark or name 
shall not be appropriated by one person, vfhich is equally the 



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J.R.Lavvronoe, Sheet — 2 — 
property or right of another. I must regard the name, since part 
of it is a Gommon surname and part a common title which takes the 
place of the Christian name, as a mere name v;hich ariy person hav- 
ing that name and title oould rightfully apply in the same way as 
applicant appears to apply this, and for this reason I must sus- 
tain the Examiner in refusing the registration. 



A Z £ L i. £ A 1 1 0^ H _ 

of 

H E N R Y S A y; Y E R, 

Decided Jan, 6. 18V5 . 

Kccorded Vol. 15, Pap:e 258 . 

oOo — 

SPEAR, ACTIIIG COLaaSSIONER: 

In this trade-mark, the registration of which is refused 
by the Exaniner, for the reaso-ns that one word is the name of a 
person, and the other descriptive of the article to v/hich the 
trade mark is to be attached. The latter part of the statement 
applicant denies, though I think, not successfully. 

Referring tc the specification I find that the mark is 
to be placed on a "Blueing or Chemical Compound" -x-*-o£ for use 
in washing clothes," I see no other difference than the small one 
of form, between the v;ords "Blue" and "Blueing". 

I think the Examiner's position correct, and must affirm 
his decision. 



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APZiiiC.ATI.0.11 
of 
!• J- 1 1 L c. ^ X ^ CO., 



Decided Jan . 1 9 ,1875 . 



Recorded Vol. 15, Pap.e 362 . 

oOo 

SPEAR, ACTING COLCII SSI CHER: 

What is called a trade-mark in this application consists 
of a plug inserted in the "bung of a casl?: containing the article to 
be sold. 

I do not find in this any of the proper characteristics 
of a trade-mark. It is properly a part of the construction of 
the cask; and further does not appear to me to have any conspicu- 
ous or distinctive characteristic calculated to attract atteiition, 
and distinguish this article from others of its class as a proper 
trade-mark . should. 

I must affirm the decision of the Examiner and refuse 
the registration. 



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74^40'^ 



of 

GU^IAVE F. ^C.HURMAN, 
Decided Liar. 19,1875 . 

Hot Recorded. 



-oOo- 



SPEAR, ACTIITG COI.LII SSI ONER: 

This application is forwarded to the Coinnissioner by the 
Examiner for instructions upon the follov/ing point. Applicant al- 
leges, not that he has already used, but that he intends to adopt 
the symbol or marlc which he describes or shoT7s. The Examiner re- 
fers to the 77th Section of the Act of 1870, which uses the phras- 
3ology "intend to adopt o:C.,£: and relates to the registration of 
brademarlcs. He asks "Shall this literal reading govern? If so, 
/does it not involve an absurdity in permitting an abstract symbol 
that is not adopted to be registered as a fac-simile of a mark up- 
on merhandise?" The language of the statute is so explicit, and 
the same terms are so many times repeated that I see no way to 
avoid following the literal reading. For instance, the second 
requirement in the section and compliance with whloh must precede 
the registration is as follov/s:- "by causing to be recorded in the 
Patent Office the class of merchandise and the particular descrip- 



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G.r.Sohuinan, Sheet — 2 — 
tion of goods comprised In such class, by which the trade-mark has 
"been or is intended to be appropriated." Tho third clause uses 
the saiae terms. 

"Srd. A description of the trade-iiiarK. itself, with fac- 
simile thereof, and the mode in v^hich it has been or is intended 
to be applied and used." 

How if a marl; cannot be registered unless it has alreac^ 
been applied to the merchandise, then I see no possible meaning or 
appropriateness in the use of the word "intended" in these clauses 
As a marlc may exist before it is applied to the merchandise I do 
not see any necessary absurdity in permitting the fac-similc of it 
to be registered. Therefore any person or firm stating in the 
words of the ststute, that he "intends to adopt aiid use" a trade- 
mark for exclusive use within the United States, is entitled to 
registration upon such statement and compliance v/ith the other re- 
quirements. 

There seems to me to be no other course possible for tho 
Office under the law as it now stands. With these instructions 
the case is returned to the Examiner for such farther action as he 
shall thiiHc proper. 



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APPLiC.AT10.N 
of 
IDWllI L. PALMER, 

Decided Ilarch 2 9,1875. 

Rec orded Vol, 15, Pap:e 502 . 

oOo 

SPEAR, ACTIIIG COLn.II SSI ONER: 

Applicant applies for recistration of a print consisting 
of the words "Signal Service Barometer", which words applicant 
specifies are to be printed or stamped on the iDarometers made by 
him. It is clear that this print is not a label, nor of a nature 
of a label, in any ordinary signification of the term; nor does it 
denote the name of the manufacturer or place of manufacture, or 
style of goods. The v/ords are rather of the nature of a trade- 
mark: which might be registered as such, but for the fatal objec- 
tion that they are descriptive of a certain class of articles now 
in existence. All those instruments of this class, used 'oy the 
Signal Service might be properly denominated, and probably often 
are denominated signal service barometers. This applicant cannot 
therefore acquire any title to the exclusive use of these words. 

The decision of the Examiner is therefore affirmed. 



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AZEL1C.ATI.0.N 
Of 
lll^EIiBERG&^C.MPANY, 

Decelded Iv^aroh 50,1875 . 

Recorded Vol. 15. Pap,e 596 . 

oOo 

SPEAR, ACTING COiSvIISSIOIIER: 

The appelant s in this case submit a print or picture on 
which certain words are inscribed and v/hich they ask may be regis- 
tered as a label. It contains in the centre, the representation 
of an ornamental shield having upon it a picture of a rose; on one 
side of the shield the figure of a man, and on the other that of a 
woman. Beneath this shield is another with the words "Key West" 
inscribed upon it. The border is formed of the representation of 
a rose bush in blossom on one side and on the other tobacco plants 
There are barrels, boxes and other minor figures in the background 
Above are the words and letters "La Rosa S.Y.CA. Espanola", on 
the right "No. 19 Calle De Dey", on the left "Fabrica De Tobacos". 
The central portion first described consisting of the rose which 
is on the upper shield and the words "Key Y/est" below has been 
already registered by this company as their trade marl^; and they 
now ask that the remainder of the figure or picture may be regis- 



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Sicdenberg Co., Sheet — 2-- 
tered as a label. The Examiner objects to this on the ground, 
that it is not a true label. By the Act approved June 18th, 1874, 
it was provided :- "That in the construotion of this act the words 
"engarving, " "cut," and "print" shall be applied only to pictorial 
illustrations or works coriiieotod with the fine arts, and np prints 
or labels designed to be used for any other articles of manufac- 
ture shall be entered under the copyright law, but may be regis- 
tered in the Patent, Office. And the Commissioner of Patents is 
hereby charged v/ith the supervision and control of the entry or 
registry of such prints or labels, in conformity with the regula- 
tions provided by law as to copyright of prints, except that there 
shall be paid for recording the title of any print, or label, not 
a trade-mark, six dollars, which shall cover the expense of fur- 
nishing a copy of the record under the seal of the Coimnissioner of 
Patents, to the party entering the same." 

Ti'/hile the statute relating to copyrights remains in 
force and governs the registration of these labels or prints, it 
is specially provided that these prints and labels v/hich may be 
registered in the Patent Office, shall be those designed to be 
used for articles of manufacture other than pictorial illustrations 
or mark^ connected. ?;ith the fine arts, and shall not be trade- 



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Sledenberg Co., Sheet — 5 — 
marks. We are left for our interpretation of the terms to 'their 
ordinary signification. In regard to the tenn label I suppose 
there v/ould be little difference of opinion. In this connection 
it means definitely, "a narrow? slip of si lie, paper, parohnent ccq. 
affixed to anything denoting its contents, ovmership, and the 
lilce." (V/ebster's Dictionary-Label.) 

In T/hat respect docs the word print differ from this? 
It may mean the same thing and be entirely synonymous in this con- 
nection with label. The connection vrould soem to indicate cer- 
tainly that something analogous to a label v/as intended by the 
word. But whether tlie print which may be registered in the Pat- 
ent Office, under this section can be a mere pictorial illustra- 
tion does not eoncorn us here to inquire. This whicli applicants 
present for registration is not a mere picture, nor can it be 
called a label in the ordinary signification of the term. If it 
be a label then certainly no distinction v/hatever can be made be- 
tween a label and a trade-mark. If it does not denote the name 
of the manufacturer, or the place of manufacture, the style of 
goods or any such matter, unless it be found in the words "Fab- 
rica de Tobacos" v;hich compared with the whole are a very small 
and unimportant part and would have very little significance for, 



-It 



Siedenberg Co . , Sheet — 4 — 
an American Llarket. 

On the other hand, both In the details and in the gener- 
al character of the print, it has all the character istisc of a 
trade-mark. It is all of a piece v;ith that part which applicants 
have already registered as their trade-mark. The fact upon v/hich 
they lay so much stress, that they are not entitled to claim some 
of these elements as their trade-mark because they arc not new 
with them but have already been used for like purposes by other 
parties, tells rather against them for their case. Por this does 
not tend by any means to prove that this is not a trade-mark, or 
of the character of a trade-mark, and it would be obviously un- 
just, and an evasion of the law to permit parties to register as 
labels, trade-marks to v/-hich they would not be entitled as trade- 
marks becasie the property of others or of the public. 

I must therefore sustain the action of the Examiner in 
refusing the registration desired. 



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AZ£IiiC.AT.I.^N 
of 
HUGE MULL1G.AN, 

DeGidod March 51. 1075 . 

RecordGd Vol. 15, Page 589 . 

oOo 

SPEAR, ACTIIIG COIvLIISSICITER: 

This applicant applies for registratioii of a print con- 
sisting of the words "Genl. G. Vifashlngton 

Exhibition Watcli, 1876. 
Philadelphia." 

It is evident that this is a mark arbitrarily chosen, 
and designed to be applied to applicant's watches to distinguish 
them from others in the marliet. Otherwise than as a print it has 
no significance whatever. If not a trade-mark with all its char- 
acteristics, it is purposeless and without meaning and appears to 
be exactly that which is excluded by the terms of the lav/. 

The decision of the Examiner is affirmed. 



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A£ZIilC.ATI.^N 
of 

UNITED STATES CORSET COLiPAlTY. 

Decided :.:ay 5« 1075. 

Recorded Vol, 15. Par,e 455 « 

eOe 

SPEAR, ACTIiTG COI£,:i SSI ONER: 

It apv^oars from the record in this case, that the trade- 
mark first represented in the application was refused registration 
on the grounds that the same mark had been used by other persons, 
appropriated to the saine class of merchandise. Applicants now 
submit a nev/ application containing a totally distinct Trade Mark 
and ask that the fee paid upon filing the first application be 
transferred to this. The second requirement of the law, a compli- 
ance T;ith v/hich is one of the necessary conditions of registration 
is, "the payment of the fee twenty-five dollars in the same manner 
and for the same purpose as the fee required for patents". The 
fees paid upon filing an application for patent were intended to 
cover the expenses of an examination into the novelty of the sub- 
:ject-9atter contained in the application, and never in any case, 
are they refunded by reason of lack of novelty in such subject^ 
natter. As the fee in a trade-mark application is paid for thi 



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U.G. Corset Co., Sheet --2 — 
same purpose as the fee required for patent, it seems plain that 
it is not to be refunded, because the subject-matter contained in 
the applicationj is not found proper for reeistration. As appli- 
cants' request in this case, involves the refundiiig of the fee, it 
must be denied. 




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of 

GREAT FALLS :.!ANUF'ACTL^IITG CCLIPAITY . 

Decided June 5,1875. 

Recorded Vol. 15, Pap.e 477 . 

oOo ^ 

SPEAR, ACTING COIEIISSIOIISR: 

The laF vrhich provides for fhe recistration of labels by 
the Commissioner of Patents, excepts from registration as prints 
or labels, such matter as may be a trade m.ar]^. V/liat constitutes 
a trade mark must be decided, from the very nature of the case, by 
the registering officer and not bef the applicant himself. 

In this case I agree, without hesitation v/ith the Exam- 
iner, that the subject matter is such as may be registered as a 
trade mark, and cannot therefore in accordance with the law be 
registered as a label. 

Both the cases brought up by this applicant involve tho 
same question, and on both the decision of the Examiner is affirm- 
ed. 



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AP£iilC.ATI.ON 

Of 
JANE ^C.O.TT, 

Decided July 6, 1875 . 

Recorded Vol, 15, Fap:e 508 . 

oOo 

TKACI-rER, COLn.ilGSIOlIER: 

In this case the applicant desiros to register as a la- 
bel a figure or drav;lng of a lily known as the Victoria Regia, the 
words "Victoria Regia" and the "The Imperial Cosmetic for the Com- 
plexion", together v/ith a description of its qualities. 

This case differs from the former one in the respect 
that it is very doubtful whether the distinctive words or title in 
the present application are actually descriptive of the quality of 
the article to which they are applied. 

"I.i'ay Apple Pills" is the correct name of a well Known 
medical article; but it is exceedingly doubtful if the Victoria 
Regia Lily, or a fluid extract therefrom forms any essential part 
of this cosmetic. The plant is a native of South America, and is 
not an article of commerce. It would be necessary to extract the 
oil at the place of its growth, and the expense of maKing it a 
prominent ingredient is a cosmetic would be very great. Very many 



I 



Jane Scott, Sheet — 2 — 
cosmetics bear pretentious floral names, when it is well known 
that their composition is mineral rather than vegetalDle. These 
facts together with others that might be mentioned create a strong 
presiimption that this name is more fanciful thai'i descriptive, and 
I agree with the Examiner that the words "Victoria Regia and Im- 
perial" together with the drawing of the plant constitute a tech- 
nical trade mxark rather than a label. 

His decision is therefore affirmed. 



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APPLICATION 

Of 
^DY/XII H^LMKS, 

Decided July 15, 1875 . 

Re co r do d Vol. 16 « Par.e 10 . 

oOo 

SPEAR, ACTIIIG COLCa SSI CHER: 

Applioaiit seelcs to register as a trade inarlv, tc "be ap- 
plied to a telegraphic apparatus on the doors and windov/s of build- 
ings, th(.) words "burglar alarm," the object of the apparatus being 
to indicate to the occupants of the building, the entrance of bur- 
glars. 

The Examiner refuses registration, on the ground that 
the words are purely descriptive. That the words are purely de- 
scriptive is apparent to my mind by comparison of the words with 
the apparatus to which they are applied. To any one reasonably 
well acquainted with the English language, I thinl-c the words would 
convey no other idea than that the apparatus v/as an alarm intended 
to give notice of the approach or entrance of burglars. That such 
a combination of words cannot be properly registered, as a trade 
mark, is sufficiently clear from the case of the Delav/a ro and Hud - 
son Canal Co. vs. Clark . (I Off. Gaz. p. 279.) This case ap- 



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E. Holmes, Sheet — 2 — 
pears to have been referred to by the appellant hinself. It was 



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held by the Supreme Court - that the name of the region of country 
could not be ap^-ropriated as a trade-marli to the exclusion of 
others who produce or sell a similar article coming from the same 
region. The reason of this appears to be that the term LacXa'.Tana 
was in that sense truly descriptive, and the Court says - that a 
name "merely descriptive of an article of trade" cannot be employ- 
ed as a trade marX. 

As I am satisfied that the words employed in this case 



are purely descriptive, I must affirm the decision of the Examiner 



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APPLlC.Aj[^I.^N 
of 

S.11DENBERG. & C.^MPANY, 

riecided July 24. 1G75 « 

Recorded Vol . IG, Pa/^e 57. 

oOo 

SPEAR, ACTIITG COIEHSSIOIIEH: 

I have recalled this case at the request of ap^rlicants 
and upon an arginnent submitted l>y them, for reconsideration of a 
decision formerly given. I am inclined to thinlc that the former 
decision was erroneous, and that the applicants are entitled to 
recistration. 

The initials of the firm, the words "la fabrica de to- 
baccos, the No. 19 calle de dey" may be sufficient to maKe the 
paper a proper label even if the landscape and other features 
would not brine it within the meaning of the term print. I am by 
no means sure that any addition v/hich may be made to a proper la- 
bel would deprive the applicant of the right to register the whole 
as a label and to whatever protection that registration would af- 
ford. But in the present instance as they have already registered 



*-*'>*ri42i«^. - 



the trade marlis contained in this print, th8.t question need not be 



w;-; viit^^s^cw^ii'WiyKS??^';^ 



^ 



raised. 



Seidcnberg & Co., Sheet — 2 — 



For these reasons I must reverse the deoision of the 



Examiner and order the registration prayed for by applicants. 



i 



'3y 



•V 



w 



T^K^^^ 




f 

of 

IH^IA HHIBER £O.MB C.O.. , 

Decided July 2G, 1875 . 

Kecordod Vol. 16, Pap.e 58. 

oOo 

THACHER, COIvHII GSI ONER : 

The Exanincr objects to the registration in this case on 
the ground "that the application einbraces several classes of iner- 
chandise, X7herftas under the law "it should be confined to a single 
Glass". 

Applicant has used the marX upon various articles manu- 
factured from the hard compound of india-rubber. In my opinion a 
person or company engaged in the general manufG.cture of hard rub- 
ber goods is entitled to register a single trade mark to be applied 
to such goods indiscriminately; the "class of merchandise" in such 
case being all goods made of hard rubber. 

The decision of the Examiner is therefore overrijiled. 




k 



# 



I 





(4"* 



^ 




-',-, ift " — 



AZ£L1C.ATI.^N. 
of 
TUTTLE HAirLnFACTUPJlIG C01\II^A!TY . 

Decided AuR. 11. 1G75 . 

Roc orded Vol. IG, Fap^e 62 . 

oOo 

SPEAR, ACTIIIG COIvE.II SSI ONER: , 

) 

Applicairc dosiros to ro sister as a trado marl^ to be ap-/ 
plied to articles manuractured by tliein, the v/ord "Tuttlo" which is 
a part of the name of applicant. The case is precisely the sane 
as that which Tvas before the Supreme Court of New York, in the 
case of Howe Machine Co. (Cox American Trade L'ark Cases, p. 421.) 

The former Examiner in refusing to register this word 

held - that it could. not be a lai"ful trade mark, although adinit- 

ting that "a court of equity might restrain a rival from diverting 

"the business of the applicant by an unlavj-ful use of the name, on 

"general principles in equity." That was not the groiind taken in 

the case referred to above. The court stated explicitly, that the 

plaintiff could adopt and appropriate the word "Howe" as a trade 

marli, as against Eli as Howe, Jr. If the word "Howe" is sustained 

as a trade mark I see no reason, whatever, r/hy the v;ord "Tuttle" 

should not be. The decision of the Esaniner is accordir.gly re- 
versed. 



1 



^-aa< 



! 



of 

D. ^RC.UT.T 8: GO.N, 

DeGlcied Aixr-,. 5, 1875 . 

Reoordo d Vol, IC, Pap.o 57 . 

oOo 

SPEAR , ACT Ilia C OI.C.II SSI ONER : 

The sub j Got -mat tor which applicant seeks to register as 
a label, is a printed slip having at the top a monogram composed 
of the initial letters of the firm, below which are the words 
"Orcutt's Salt-Rhuem Cure". This is followed by an enumeratijon 
of the diseases for which this cure is intended, the price of the 
article, fac-similc of the signature of the firm, and the place of 
manufacture. In all its essential, and by far the larger part of 
this slip, it is unquestionably a label. The Examiner refuses 
registration, on the ground, that the monogram a^id the fac-simile 
if taken from the label might constitute a trade mark, and there- 
fore make the Ysrhole slip a trade mark and exclude it from regis- 
tration by the terms of the law. 

The Examiner, in considering this application and in re- 
fusing the registration prayed for, may have been influenced by 
the decision of the Acting Comir.issioner, i© the case of Godillot, 



Xi^ 



I 



^ 



/ 



E.Orcutt Cc Son, Sheet -2- 
O.G. Vol. 6,'*'p. 641; and I refer to that deoision to eorrriot, rrhat 
I believe to be unguarded language, which is capable of construc- 
tion broad enough to exclude the present application from regis- 



tration. 



The mat';er under consideration in that case, was, in all 



its essential characteristics, a trade mark; and it was not in- 
tended to exclude from registration as labels, matters which -.vcre 
essentially labels, although having elements v/hich might be se- 
lected and used as trade marks. 

In the present instance the slip of paper indicates the 
contents of the bottle, or package to which it is to 'be applied, 
the purpose of the contents, the price, the manufacturers, and 
place of manufactury. The rest is merely incidental, and it 
would be manifestly a hardship to refuse registration, of what is 
so plainly a label, by reason of some added ornamentation. 

The decision of the Examiner is therefore reversed. 



40 
f > 



I 



^ 



I 







UA^f ^i^vf' 



# 



of 

Deci dGd Au p; , 1.3, 1875 . 



/ 



Recori^ed Voi, ig, pap;e G5 . 



-oOo- 



SPEAR, ACTING C0I.E:IGSI';NER: 

The trade nark wliioh applicants seek to register, eon- 
sists of the words'-Pe^ect Baking__Po5der». The Examiner refuses 
to admit it for registration on the ground that it was not "an ar- 
bitrary symbol, but- merely a' term of quality or commendation, or 
was purely descriptive". Undoubtedly a Y;ord purely descriptive, 
as used in any language cannot be appropriated by any one for ex- 
clusive use to designate an article sold by. him, the word being 
used in its ordinary signification. (Wolfe vs. Goulord, American 
Trade Marlv Cases, page 22Q, ) Wherever a word is used in its ordi- 
nary signification as the naine of a thing, or as an adjective 
properly and familiarly used in the language, such a word is the 
com-non property of those speaking the language, and unquestionably 
cannot dc appropriated as the exclusive property of any party to 
designate the thing, or describe the thing which they had before 
been using Qommoi-:ly to d .signate or describe. 



t 

$ 



C. 8c H., Sheet -2- / _^ ' 

The diffioulty v/hich arises in this cafee, is that of de- 

V 

termining whether or not the word is used in its purely descrip- 
tive character. 

I ai'.i inclined to think, on the whole, that in this case 
the v/ord perfect is not so used. Words which indicate the com- 
position of this powder, its color, appearance, or special and rec 
ognizable qualities would be clearly descriptive; but this word 

"perfect" does not strike me as coming within this category. In 
this connection it is rather of the nature of the word "Excelsior" 
which was held the proper subject of a trade marK in Braham vs. 
Bustard (American Trade Llarlc Cases, p. 674). It is not a fataj 
objection to a word used to designate an article, as a trade mark, 
that it be suggestive of the quality of the thing or the exoel- 
lence of it, it is simply necessary that it sould not be purely 
descriptive, and used in the ordinary way. As I thinX this word 
is not used in this connection, in the same sense, and under th© 
same conditions as ordinary adjectives, such as the v/ord "white", 

"granulated", "chemically prepared", or any such T/ords, I thin}: the 
word should be registered as a proper trade mark, and must accord- 
ingly reverse the decision of the Examiner. 



f 



/ 




^ 



k 



A P P L I. C. A T. 1 0. H 
TIIE IIIDIA RUB BER C OliBCO . , (/^ 
D ecided Au r,. 14, 1875. 

Rooordad Vol. IG, Pap:e 66 . 
f oOo 

TKACIIER, COi^nSSIOITER: / 

t 

y 

The Exaninor has rrjfuscd to register the marli described, 
on the ground that it is not a lawful trade marK.^' 

The inarlc sought to be registered coj"iSists of the folloisr- 
ing words. "The India Rubber Co. — Goodyear." There is a dis- 
crepancy between this arrangement of \7ords set forth in the spec- 
ification, and the fac simile v/hich is declared to be the inarK 
which has been used for more than twenty years past. 

^^^ fo-c simile is simply a label containing the follow- 
ing Y/ords:- 

"The India Rubber Comb Co., 
!Iev; York. 
Sole Manufacturers of 
Goodyear' s 
India Rubber and Gutta Fercha Combs, 

Under 
Meyer's Patents, April 4, 1854, rdissued Aug. 13, 1S59, 

extended April 4, 1868. 
I Do^. Medium S. Fine Combs, llo. 
Assorted Fancy Patterns. 






I.R 




■»! 



I.R.C.Co., Sheet -2- 

It wii: be seer, that the "Goodyear" is not used here to 
indicate anything more than that the company are manufacturers of 
his, Goodyear' s, India Rubber and Gutta Feroha Combs," under cc^r- 
tain patents, and the first portion of the mark is simply the firm 
name of the company, aclcnov/ledged to be such by applicants. Nov 
the law distinctly declares, that the name of a corporation or 
firm is not a laivful trade marlc. Sec. 4G59 U. S. RevisedStatutcs, 
provides that "The Gomi-issioner of Patents shal^ not receive and 
record any proposed trarle marh which is not and cannot become a 
lawful trade marlc, or which is merely the name of a person, firm 
or corporation unaccompanied by a miark suf ilcient to distinguish 
it from the same name when used by other persons, (Scc." The sim- 
ple naiae of this firn cannot therefore be registered as a traile 
'marlc. The addition to this name of the statement, that the com- 
pany are the sole manufacturers of Goodyear 's combs, is not such 
additional distinguishing matter as the the lav/ contemplates; it 
is a mere statement of a fact for the information of the public, 
nothing more and nothing less, and can have no effect Wiiatever 
upon the status of the remaining words claimed as a trade marX. 

Copies of a complaint nande by this Com.pany, againnt one 
Isaac T. Keyer, and the order of the Court hearing said complaint,! 



[ 



•« 9 




i 



I.R.C.Co., Ghoot -5- 
iiave been filed, under the supposition that the order is a decis- 
ion that the words mentioned above constitute a legal trade inark; 
and that therefore, under the last clause of Sec. 4959, the iiiarlc 
may be rosisterod. 

I DiTi unable to plao-o this construction up^n the decision 
ot the Court. It is simply the grant of a preliminary injunction 
and enjoins the defendant from using the words "The India Rubl-er 
Comb Company" without deciding v/hether they constitute a legal 
trade marX or not. There is no evidence to show that this ques- 
•tion was brought before the Court, and there is no evidence before 
me that the case v/as ever brought to a final hearing for a dispos- 



S 



al of all the requests made in complainant's bill. Wow a corpo- 
ration may have a proprietary interest in its firra name which can 
be enforced in Court; and the fact that in this instance the Supe- 
rior Court of the City of ITew York, enjoined the defendants from 



i 



using the firm name of com-plainant^ does by no means afford ev- 
idence that such firm name constitutes a legal tracfe marK. 

In the absence of any evidence that the ?;ords found in 
the fac simile have ever been declared, by any court, a lawful 
trade marli, the Commissioner must be controlled by the specific 
language of the Statute, which certainly and unmistakably prohib- 



<§ 




i 




I 



Wf 



I.R.C.Co., Shoot -4- 
its a registration of si.iol'i a Fiark as this. . The fag simile is 
simply a labol aiid may Tdo rogistcrod as suoh, but not as a trade 



marK. 



The decision of the Examiner of Trade Ilarks is affirmed. 



M 




i 



r 




^LF 



50 



Mm' 



APPLiC.ATlC^N 

of 
£0.1111 li- C.ARTER 

Decided Aup;. 51, 1875 . 



Keco rdod Vol. IG, Pap.e 85 , 



-©9e- 



SPEAR, ACTIIIG COLCII SSI ONER: 

l/ f ind, on t}iis slip, the designation of the contents 
of the "box or package, to which it is to "be applied; a statement 
of the diseases for which it is intended as a reinedy, a coimnenda- 
tion, and caution to purchasers. T}iis is enough to constitute a 



label, and it may be so regarded. 



.Mm 



&■*/ 



pp-^p^^ 




I 



n 



50 






\ 



/ 

/ 

1 



APPLiC.ATI.O.N 
of 
JAMES. TURNER, 



Decided Sec. 5> 1G75 . 

Recorded Vol . IG, Page 172 . 

oOo 

SPEAR, ACTITTG GOICH SSI CHER: 

The statement of the case made with reasons of appeal is 
essentially different from that inthe specification vmich describ- 
es the marlc. It is represented in the reasons of appeal, that 
the mark consists of the words, "Turner's Syrup, Desert Sauce". 
In the application, which is the same as the fac simile submitted, 
the mark is "Turner's Flavoring Syrup, Desert Seuce or Beverage". 
Whether the article to v/hich this mark is applied be a syrup, 
sauce or beverage, or be such that all these names are equally ap- 
plicable to it. ihe mark seems to be purely descriptive . in ev- 
ery respect. 



I see nothing distinctively arbitrary in aiv of the 
words and must affirm the Examiner's decision. 



I 



f 



^ m. 



t^/W 



/APPLI.C.A210.TT 
of 

Dccici od Deo. 27, 1875 . 

Ep_cp r dcd Vol. IG, PaF;e 254 . 

oOo ' 

DUELL , C OIvi:.:i SSI OITER : - 

The petitiouers seelc to regiDtor a trade mark consisting 
of "Galvanized hoops placed on a barrel of dark color", to be used 
on barrels containing spirituous liqours manufactured by them. 

Galvanized hoops for barrels have so long been used that 
their use on whiskey barrels can hardly be regarded at this time 
as an original appropriation by petitioners. 

But if no?; first adopted for liqour barrels, it is not 
sufficiently distinguishable from the same marl: on similar barrels 
to either protect t?ie applicant in the sale of his goods, or to 
afford notice to the public of original ownership. 

The decision of the Examiner is affirmed. 



\ 



«-//w 



/ 





V 



of 
INDIA RUBBER COIvIB COIvrPAKY . 

DGcldGd Oct. 27, 1875 . 

Recorded Vol. 16. Paf;e 14-2 . 

oOo 

SPEAR, ACTING COi.n.II SSI CHER: 

I thinJv that the select lo]^ of the initial let ,ers of 
the first two words of the name of the firm renders the T;hole le- 
gend an arbitrary mark, and not the same thing as "India Ruboer 
Comb Co." 

The Examiner is therefore aiithorisod to register the 
mark. 






53 






^ 




/ 



APPLiC.AT10K 
of 
DUNDAS^ DI. CJC & C. ^. , 

Deoided Jan. 15, 1876 . 






Reoordod Vol. 16. Page 274 . 



SPEAR, ACTING COmil SSI ONER: 

Applioants apply for the registration of the word "taste 
less" as a trade mark, in connection with certain preparations of 



me 



dicine. The word, as the Examiner holds, appears to me purely a 



descriptive one and to be used here in its ordinary signification. 
The 7/ord must be used in this case as descriptive of the thing or 
be simply misleading;. It cannot be understood in this case as ar- 
bitrarily chosen. "An exclusive use can never be successfully 
^claimed of words in common use previously as applicable to similar 
"articles." V/olfe vs. Goulard (American Trade Mark Cases, 2^9). 

If the medicines sold by applicants are tasteless then 
this is the proper word using it in its ordinary signification to 
describe them, and there is no autliority that I am aware of for 
giving any party the exclusive use of it. 

The decision of the Examiner of Trade Marks is affirmed. 



i. 



k 

r 



Gection 4956 of Revised Statutes,/ see page 31. Pamphlet 
Laws of 1075 Us the only section of law that applies to rofimding,^ 
money paid by inistal^e &o "as for fees acerueing at the Patent Of- 
fice" . And upon the construction of this law, will be determined 
the propriety of refunding money paid tc the office, "on deposit- 
ing a label for registration". 

It is \iall Imoi^n, that mistal^es are made in the payment 
of money, upon the filing of applications for patents, as an in- 
stance Fifteen Dollars are required to be paid upon filing an ap- 
plication, if the inventor forwarded with his application a larger 
sum than is required by law to be paid, it is such a mistake as 
would warrant a refunding of the -f-ee^. The exact sum required 
by law, to accompan:/ any application for a Patent, Trade I.IarX or 
Label, is established by the table of fees in the law and rules of 
the office. If less is received the office refuses to act upon * 
the case, and it is deemed "incomplete", and the parties notified, 
and if in excess of tho sum required, the office also "notifies the 
party pacing it, and stands ready to refund upon request, and in 
accordance with the law. The jurisdiction of the Patent Office 
is clearly defined, and the method to be pursued by applicants, 
before the Office, for Patents, Trade Marks and Labels clearly 



i 



pointed out, as well as the cunoimt required to be paid as fees . 
aceomparxying each of the subjeots, above referred to. 

"On depositing a Trade Llark for registration ^^25. 00 
"On depositing a Label for registration OS.OO 
"On filing application for Patent fcc Si 5. 00." 
The payment of the stipulated siuns referred to are conditions pre- 
cedent, to the taking up for exaininatioh, suoh applications,. Secticn 
4959 - states that "the Coimnissioner of Patents shall not receive 
"and record any proposed trade mark, which is not and cannot be- 
"come a lawfiil trade mark" &c. It has been contended that by such 
refusal to '"receive and record" a trade mark, that the money paid 
was paid by mistake , and subiect to be refunded. The law defines 
and limits v/hat shall not be a lawful trade mark, and the exami- 
nation of the application, is to deternine if the law and rules of 
the of ice ^ave been complied with. The registration of Labels, 
is strictly analogous, to that of Trade Marks. It excludes cer- 
tain subjects from being registered as Labels, and defines the 
conditions upon T\rhich a Label "may be registered in the Patent Of- 
fice". An application of this character requires an exanination 
by the office as the legit im.ate custodian of the records of "entry 



and registration" And the applicant for such nabel has no more 



i 



f 

^ 



m 



ii. 
I 

1 



I 



k: 



I- 



right to assume that a rai stake h as been made in the -nayirient, "by 
him of money, and the receipt u^ the Patent Office of siioh money, 
after said office has determined, that the Label applied for to 
be entered and registered is refused. than has the ai^plicant for 
the registration of a Trade I.Iark under similar circumstances. The 
law never intended that t:ae labor of this office, mental and phys- 
ical should be employed/,' in and about matters over which it has 
exclusive jurisdiction, \7ithout the payment of such fees as are 
required by law« And will not treat as mistalee^ of the parties 
paying such money, 'nhen the result to prove such mistake, is the 
favorable or unfavorable action of the office upon the subject 
matter before it. , 

The conclusion arrived at by Judge James is approved and 
the fee paid for registering a Label will not hereafter be refund- 
ed. 

R. H. Duell, Commissioner. 
Peby. 17, 187G. 



appli^atio.k: 

of 
Decided Feb. 31, 1C7G . 



Reoordod Vol> IG. Pap.e 542 , 



■oOo- 



SPEAR, ACT INC COm-II SSI ONER: 

It ap.f-ears frora the records in this case, that the is-ord 
"Haxall" is the trade mark and has been for many years of the firm 
of Haxall, Crensha;T 5: Co. This being the case I thinlc that the 
trade mark sought to be registered by these applicants would be so 
near that of another firm as to mislead the public. Although in 
this instance v;ith the tv70 marks, or designs side by side any one 
would readily perceive the difference; yet a purchaser having 
heard of "Plaxali flour", and looking for that article in the mark- 
et, might easily mistake the flour to which this mark is attached. 



for that. 



Nor do I think that the addition of the I.Ialtese Cross 



would make any difference. If it means anything, if there be any 
object whatever in using the term "Haxall" it must be a distino- 
tion of the flour as Haxall flour; but whatever merit there may be 



in the article so named and known, the original proprietors of 



5 



Cogcin, Kidder ^c Co., Sheet -2- 
that marli are entitled to it. 

In the case of the Amoskoag Llanufacturing Co. vs. Spear, 
(Cox American Trade Llark Cases, pace 87) the defendants in that 
ease did not use the v/hole marK of the plaintiffs, and in fact 
made greater change than has been made in the present case, but 
yet were held to have infringed upon the rights of ':he plaintiff. 

In the case of Clark vs. Clarl;, id. page 206, the trade 
marX of the plaintiffs v/as omitted in part only, the names of the 
persons aiid places being changed in the marX used by the defend- 
ants, but the difference was held by the Court to be merely color- 
able. 

In the case of the Brooklyn White Lead Co. vs. I.Iasury, 
25 Barb, page 416, it was decided that a mere change of a word 
could not be sufficient to constitute a new trade mark. 

In my judgment the leading word in the present applica- 
tion T/ould be that to which the attention of the public is called^ 
and although not designed perhaps to do so, might mislead them and k 
give the impression that the article sold was the same as that 

sold by Haxall, Crenshav; & Co. 1 

1 

For these reasons I must sustain the decision of the Ex- 
aminer refusing the registrationo 



U 



; 

t 



.7Wr I 




L 



APPLI^ATIOII 
of 
E L I A G BLOCK e'c SONS, 



DeoidGcI 17'e>jy. 21, 1070 . 



Endorsed on Examiner's Brief. 



•oOo- 



SPEAR, ACTING COICJISSIOITER: 

The adiriission of a new marlv into the old applioation 
would aiaount to the transfer of the foe to another application, 
because the application Y^ould not "be the same, but different. I 

am of the opinion therefore that applicant, in order to register 



the new trade nar!k, must file a new ap::'lication, 



b 



of 
_WI.ITXI.ELD PETER S,_ 

Decided Feb. 26, 1876 . 

Recorded Vol. 16, Pap;e 545 > 

oOo 

SPEAR, ACT DIG COiaflSSIOKER: 

I do not imderstand that any ob;jection is made to the 
trade mark for which the applicant asks registration by reason of 
its similarity to any other trade mark registered, or in use prior 
to this application. 

In the present case the objection ivas that the v/ords con- 
stituting the proposed mark were purely descriptive. This is cer- 
f tainly true of a part. The words "epumoniated dissolved bone", un- 
I doubtedly,are descriptive, but the first part, including the defi- 
nite article is arbitrary to this extent that the word "the" is 
prefixed to the proper name. The v/ord "Ragsdale" alone might be a 
trade-mark, as ap::lied to this particular class of goods, v/ithout 
thi? word "the" prefixed. 

I am inclined to think the mark might be supported as a 
proper trade mark. 

The decision of the Examiner of Trade Harks is over- • 
ruled. 






( 



1 Y 



u 



* » 



f * 



of 

J-il-lC.HI.MMEL & C.O.., 

Decided Maroli 10,1876 . 

Endorsed on Examiner's Brief . 
— qOo 

SPEAR, ACTILIG COLCuIGSIOKER: 

The ^TordG T/hich applicants de;Gire to register as a trade 
mark appear to be the natural and proper desoriptiion of the ar- 
ticle tc which they are to be applied. In my judgment the Exam- 
iner is right in refusing registration. 



^ 



■ 



L 



r 



/ 

API1LI.C.ATI.0.N: 
of 
I. A 1 S 0. H, McG ILL _J^ £ ^ H 1 H 1» 

Deoldod April 21, 10_7S. 

Recorded Vol. 16, P aF,e 4C7 . 

ooo 

DOOLITTLE, ACTIIIG COmilSSIOIILR: 

?men this reqn.Gst was made, in these oases, that the 
Rule requiring a roduotion in the size of the fac-similes of the 
trade-marks might be dispensed vj-ith hy reason of the great cost and 

the impracti'cility, in complying with Ru.le 87, it was iry understand- 

t 
ing that the enbellishnents themselves constituted essential parts , 

of the trade-marks; but my af,ention having been since called to 
the fact, that certain f^.ncif^ul terms alone coiistitute the trade- 
mark, and that the embellishmGnts were unessential parts thereof,! 
see no reason for making an exception to the rule in this case. It 
is true that the law requires fac-similes of the trade-mark to be 
filed in the Office, but this cannot reasonably be construed to 
mean that the fac-similc should contain the unessential portions 

of said trade-marks. .^.^ ^o 

Applicant relies upon certain fanciful words alone as 

constituting his trade-mark and states in his description that the 

embellishments may be omitted. 

The usual cou.rse, therefore, as prescribea uy the 10th & 

87th Office Rules will be fol-owed. 



■:»: 



^ 



APPLiC.AT10.H 
of 
D A 1 S, 0. H &^ 1 A T 3 0. IT 

Decided April 21.1870 . 



^7 7^ 

Recordod Vol> IG, Paf!:e 4^S- .- 






DOOLITTLE, ACTIlia COLE.IIG SIC ITER: 

This oase I thinK is distinguishalolo from the ease of 
Rowe (?c Post, 9 O.G. 496. There the Y/ords "We?/ YorJ: Cutlery Co." 
constituted clearly a corporate rxajne, which any company in that 
city doinc business had a right to use. Here a fanciful word is 
introduced which relieves it from the character of a merely cor- 
porate name. This is the word "Amber". 



Others engaged in that line may use the remaining words 
"Lubricating Oil Works" but not in connection with the fanciful 
word mentioned. 



In appears that the Examiner in cases of considerable 
doubt, has allowed affidavits to bo submitted showing the fact 
that certain titles have never been actually used by corporations 
other than those seeking to register the same. 

If the Examiner considers this one of those cases where 
the certificate and statement required "dy i^^e statute is not suf- 



^ 



•I 



t 



* 



Eav/son o: Watson, Sheet -S" 
flcient in satisfying his doubts on this point, I see no olDJec- 
tions to his requiring such evidence here. 

Such a doubt ho'vevor, should have a foundation in fact, 
as the lavv provides ordinarily but for the certificate alluded to 

With this reservation the decision of the Examiner is 



reversea. 



-^4^ 



/ 



A P P 1. I 



C A T I !! 



of 



R 1 k k 1 Ali 3. 1 11 L 2 2 K k ^^li^, 
Deoidod April 27,1070 . 

Recorded Volo le, Paf^e 496 



■OOO" 



DOOLITTLE, ACTIITG CCLCa SSI OTTER: 

The alleged label in this case oonsists, as applicant 
says of the -^ord "Eddy stone" in connection i/ith a fisure repre- 
senting a light house, the words "¥ra. Simpson o: Sons, Philadelphia 



No 



yds.", being added below, 



The "label" is to bo used on calico goods. 

The conrmon definition of t/ie Y/ord "label", attorney for 
applicant asserts, "is a strip or sheet containing descriptive mat 
ter and intended for application to a bottle, box, bale, etc." I 
assent to this definition. Of ¥>rhat ^ then, is the word "Eddystone" 
descriptive when placed on calico goods? It is nothing if not a 
trade nark. 

In view of the full consideration given to the point by 
the Examiner of Trade LiarKs further discussion is unnecessary. Kis 
decision is affirraed. 



V 



APPLlC.AT10.il 
of 
— llIiliER J. RO.£ER S,_ 

Decided June 16, 187G . 

Recordod Vol. 17, PaF,e 53 , 

oOo 

D00LIT7LE, ACTING COLLIISSI OlIER: 

TTie decision of the Examiner of Trade I.Iarlcs is affirmed. 
He sets forth very fully and clearly the reasons for his action 
which I fully endorse and adopt. 



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APPLiC.AT10.N 
Of 
-ELIAS BLO.C.X & SC.N S,__ 

Decldod June 16 « 1876 . 

Reoorded Vol. 17, Page 52 . 

oOo 

DUELL , COmil SSI ONER : 

The ainendnent of a proposed trade marlc in a matter ma- 
terial to its identity changes its character and renders the sworn 
statement required "by Section 4958 in applicable* The effect is 
to create a new trade marlL. 

Before a trade marls, can be received for examination, a 
fee of twenty-five dollars imist be paid "in the same maniier and 
for the same purpose as the fee required for patents." Sec. 4057. 
This is the price of the examination and is entirely independent 
of the result which may be reached. The Office does not v/or^ 
upon a contingent basis* 

Applicant in this case sought to register as a trade 
mark '^hat which the statute prohibits; the case was examined and 
rejected; he nov/ asl<Ls to be permitted to supplement the original 
by an entirely nev/ device and thus create a new trade marlv, and 
wishes the Office to make an examination without the paym.ent of a 



m 



E. Block & Sons, Sheet -2- 



ne\7 fee. 



T* 



This cannot be done. If such a practice prevailed each 



trade mark rejected would be substituted by another in endless 
succession, and thus by the payeinent of one fee the applicant 
would monopolize the time of the Office without giving that equiv- 
alent which the law demands. 

The only course nov/ open to applicant is to file a new 
application in accordance v/ith the law, and upon so doing his 
right to registration will be considered. 



The Examiner's action is affirmed. 



\J, 



...1. 



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APPLlC.AT.iO.lI 
of 

LAU^Z. BK.0^.,^: C.O.., 
Deoidod June 25, 187 G. 

Endorsed on Examiner's Brief . 

oOo 

DUEL L, C Cmil SSI OlIER : 

The rules of practioe governing proocedinos in inter- 
ference cases are applicable to trade marl^s and should be followed 




! 



f/V I' / 



of 

Dcolded Aur:- IC, lG7g . 

Recorded Volo 1 7, Pap:e 108 . 
_ ooo 

DUELL, comii SSI oner: 

The proposed trade marli oonsists in the Y;ords "Ashton's 
Factory Pilled" to be api'.liod to paclcages containing salt. 

It is admitted on the part of applicant that the term 
"factory filled" is descriptive and may be used by others; but he 
contends that by prefixing a partlafe name, he thereby creates a 
marl^ descriptive of origin and ownership, such as is recognized by 
the courts as a valid trade marh« 

By Section 4939, the CoimTiissioner is prohibited from re- 
ceivins for registration "the name of a person, firm or corpora- 
"tion unaccompanied by a marl^ sufficient to distinguish it from 
"the same name when used by other persons." It in claimed, there- 
fore, that by adding the words "Factory Pilled" to the name of the 
person "Ashton", the requirements of the statute are fulfilled. 
This I do not comprehend to be the true miOaning of the section re- 
ferred to. The mark which may be used should be such as of ijfs- 



/ 



N.Ashton cc Sons, Shoet -2- 
elf would constitute a legal trade mark. 

This is the only way In v/hich the name could, in contem- 
plation of law, bo distinsuished from that of any other person. 
A man is at libert;/ to use his own name in connection with any 
matter descriptive of the kind, quality, use, or manufacture to 
which it may be applied. If the natne and the descriptive matter 
are neither of them legal trade marks they do not become so by 
being used together. 

The same objection v/ould apply to the use of descriptive 
terms in connect ion with a person's name as there v/ould be to the 
name or v/ords alone; it operates to deprive others of the same • 
name from the full and free enjoyment thereof, vrtiich unless it is 
fraudulently conducted, no dine oan limit or restrict, as the use 
of words in their ordinary signification is the right of the public 

In his arguiTient applicant has made reference to the case 
of "The India Rubber Comb Co." 8 O.G. 905, as a precedent for ad- 
mitting his case to registration. By reference to this case it 
will be found that the name of the corporation was considered as 
an exception to the general rule that such matter could not be 
registered as a trade mark and was admitted under the last clause 
of section 4939, which says, "but this sec-^on shall 'not prevent 



i 



I 



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\ 



N. Ashton o; Sons, Ghoet -5- 
"the registry of any lav^ful traie mark rightfully in use on the 
"8th day of July, 1870", and it was t'/ion established that the 
words "India Rubber Comb Co." were a lav/ful trade inark within the 
meaning of this seotion. 

In the case of the "Rubber Clothing Co." 10 O.G. Ill, is 
set forth the character of proof required in cases where an appli- 
cant claims the right to register the name of a person, firm, or 
corporation; and if applicant in the present case can show that he 
comes within the rule there laid down his trade nark may be reg- 
istered, but not otherwise. 

The decision of the Examiner is affirmed. 



/ 



APPLiCAT10.W 
of 
G A T K 3 __&_ ^EVEEANC.E, 

Dcoldod Aup:. 26, 1876 . 

Reooraed Vol, 17, Pap:e 115 . 

oOo 

DOOLITTLE, AGTITIG. COLLUGSIOIIER: 

Applicant desires to register as a trade inarlv, the word 
"ShaXe" blOY/n into glass bottles. 



He substantiallj'' adraits that the word itself is not of 
that arbitrary or fanciful character necessary to constitute a le- 
gal trade marlc; the v/ord "shaXe" any one is entitled to use in any 
"bottle the contents of which are to be shaken - but he thinlcs there 
is exceptional virtue in the fact of having the word blown into 
the bottle as it is nade, and thus make it permanent, and the tvi-o 
inseparable. 

If there Mere any peculir merit in this then the same 
process would be sufficient to make a trade mark of the name of • 
any place, person or firm, or corporation, or other words not rec- 
ognized "by law as valid trade marks. The absurdity of the thing 
is apparent. 

The decision of the Examiner is affirmed. 






i ll 



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^•>*'^ 



AZZiiI.C.AT.I.O.IT 
of 
GEORGE E. GLINE^, 

DGGidcci Sept. 31, 107G . 

Recorded Vol, 17, Pap.e 148 , 

oOo 

DUELL, coj^Hvii SSI oner: 

Applioant seeks to register the words "Ruboor Roofing" 
as a trale inarX to "be applied to roofing material of vj-Mch rubber 
forms a constituent. 

It is admitted tliat words piirol^.^ descriptive of the ar- 
ticle cannot "be received for registration under the law, "out it is 
denied on the part of the applicant that the \7ords sought to be 
protected are purely descriptive. I am clearly of the opinion 
that they are objectionable on account of dosoriptivcness. They 
either describe the compound employed or else are deceptive, as 
the words employed iiave a definite and clearly defined meaning. 

Upon malcing examination I find that there are upwards of 
thirty patents granted for roofing compositions of ¥;hich rubber is 
an ingredient. Some of these contain this material in siich large 
proportions that they could, v/ith perfect propriety, be termed 
rubber roofing, so that the allegation which counsel was under- 



\ 



I tf 



G.E.Glincs, Ghoet -2- 
stood to naKe at the hoarinc that applicant's case should be re- 
garded with special favor on acco^ nt of his beinc the OwTier of the 
patent under which the rocfinc is made ic of little force, as the 
rights of these other patentees would be prejudiced if they were 
inhiclted from designating their inventions by a title which is 
particularly appropriate. 



The dooision of the Examiner is affirmed. 



1 



1 




i 6 



* 



/ 



u 







APPLlC.AT.10.il 
of 
JAM E__S M10_RU1C_K, « 

Decided Got. 5, 187G , 

Endorsed on Examiner's Bri ef. 

oOq 

DOOLITTLE, ACTI!TG C 01211 SSI OTTER: 

1!ho decision of the Exaiainer in this case is affirmed. 

It seerns apparent that the words "Great Aiaerican" as 
here employed are not descriptive in the sense referred to ■by- 
counsel, but that Ihoy torn a valid trade mark. 

Such beinr;^ the case, it oomos clearly within the doc- 
trine announced in Tic Simpson tc Sons, and unless these words are 
eliminated, registration must be refused. 



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Decide d Cot. 28, 107 6 . 

Reoordo d Vol. 17, Pap;e 107 . 

oOo 

DOOLITTLE, ACTING COinilSSIOirCRl 

The proposed t:'"ade inarK. in this case consists of the 
words "Egg Macaroni" as aprliod to packages containing macaroni. 
The Examiner's obiocticn is, that the tern is either descriptive 
or deceptive in its nature^ and therefore does not constitute a 
laY;f-ul trade marlc. His action is based upon the assujpption that 
eggs are used in the manufacture of macaroni > and therefore the 
tern "egg macaroni" is the proper designation of the article and 
consequently belongs to the public. If, therefore, the article to 
which applicants apply this term as a trade mark does contain eggs 
as an ingredient then it is certainly descriptive. On the other 
hand, if he applies the term to the ordinary a rticle linown as mac- 
aroni the T/ords are deceptive, for they represent a specific ar- 
ticle of the saiae class, and of p/hich' they are the proper designa- 
tion. 

In proof of the fact that macaroni is made with eggs 



4 



1 



^IJ 






Dolo Brother, Sheet, -2- 
rcfcrence may be had to a piilblioation entitled "Masazine of Domes- 
tic Eoonomy", VjI. 4, pages 85 and 86, published by V!. G. Orr, & 
Co. London 1859. Under these ciroTunstances it is evident that 
applicants can possess no property in the trade marlv nov; Rcught to 
be registered. 

The decision of the Exaininer refusing to register the 
saine is affirmed. 



. I 



} 



A P P L IJ A T I H ^^^^ ^ 2,^4^- 

PRATT _^ Z A R M E R, 

DGcldecI Nov. ?n , 18 76. 

Rocor dod Vo l . 17, Pap.e 2,2 .2. , 

oOo 

DOOLITTLE, ACT I TIG. C 01.2.11 SSI CHER: 

ThG U.S.Suprome Court in the case of the Canal Co. vs. 
Clark (13 T/all,oll) held. - that a person "has no right to appropri^ 
"ate a sign or syinbol, v-''hich from the nature of the fact it is us- 
"ed to signify, others may employ with equal truth, and therefore 
"havG an equal right to employ for. the saiae purpose." Numerous 
cases are there cited also sustaining this doctrine. 

Now the figure of a fish v/hen applied to lines having 
the form and substance of a line used for the purpose of fishing, 
and well iQiovrn in trade as intended for that purpose, has no more 
arbitrary or fanciful signification thari the figure of a hoS^" in 
front of a shoe shop, or upon the article itself. In short any ma- 
ker of fish lines has a perfect right to use this symbol instead 
of the word "fish". The a^ithorities are so numerous and so clear 
upon t':;is point that a further discussion of it is tinnecessarj^. 

The decision of the Examiner of Trade-Marks is affirmed. 



>u 



& 



V 



AZPL1C.AT.I II 
of 

iio.ll lURllH & C.O.., 

Decided Jan. 12, 1877 . 

Recorde d. Vo l ./S, Pa.^e 255. 
qOo 

DOOLITTLE, ACTIITG COIEIISSIOIJER: 

The proposed trade-mar}: consists of the vrords "Green La- 
bel Thread" printed upon green labels of any desired form. 

The Examiner's o"- gectlon is that the terns are not suf- 
ficiently arbitrary, as the public ar . at liberty to use green la- 
bels ai.d that such uso would probably co-nstitute an infringerient 
of the words themselves descriptive of such labels. 

If green labels have heretofore been employed upon pack- 
ages of thread in the manner claim^ d by applicant, t}ien they are 
undoubtedly not entitled to have their trade-mark registered, but, 
if, as appears to b-e the case, they are the first to use either the 
green labels or the words descriptive thereof upon such article it 
seems to me that they are justly entitled to protection therefor, 
there being, as I see, no encroachment upon any public right or 
property. 

The Examiner's decision is accordingly overruled. 



of 

TITE D. R. 3ART0IT 1^0 01. COIIP AIIY. 
Decided Fob« 5, 1877. 



Endorsed on Examiner's Brief, 



■oOo- 



DOOLITTLE, ACTIITG COmilSSIONER: 

The oonolusions arrived at by the Examiner arc regarded 
as warranted by the facts in the ease. 

There is nothing siif-:iciently arbitrary in the matter 
soiicht to be registered to permit of its being Glassed as a trade 



marlc , 



The decision of the Examiner is affirmed 



# 




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ALL k L ^ A 1 L 9.K 
of 

^ A 1 1 H A' k 1 R R ^ A 1> 
Dooidcd Feb. 5, 1877. 

Recorded Vol> 17, Paf^e 277 . 

oOo 

DOOLITTLE, ACTIIIG COivEII SSI CHER: 

The traae-marlv sought ot be registered consists of the 
¥/ords "Oiie Length Brand". The ob;iection made by the Examiner is, 
in his opinion, descriptive. This. object ion seems to be of doubt- 
ful application to the case under consideration. 

7/hile it is true that the tern employed may be descrip- 
tive, it is not so certain that it is, or that it conveys any in- 
formation regarding the article to v^hich it applies. I feel ex- 
ceedingly doubtful upon this score and prefer to give the appli- 
cant the benefit thereof. 

The decision of the Examiner is overruled. 




applic.at.io.it 

of 

JO.HTT D.PARK, 

Peel dt^d rol:. 13, 1B77 . 

Recorded Vol» 17, PaF.e 282. 

oOo 

SPEAR, C0I£.:ISSI0!IER: 

The trade-nark which applicant seeks to register, con- 
sists of the T.Yords "English CroYv-n Gin" above a circle in v/hich is 
the monogram of the applicant. Registration is refused Tby the 
Examiner on account of its similarity of certain trade-marks be- 
fore registered by Siiire dz Co. Those two trade marks consist of 
the words "Golden Cro^n Gin" and "Iron Crovm Gin". Prora these it 
appears that the; words "Crown Gin" are not claimed or owned exclu- 
sively by any person. If "Golden Crown Gin" and "Iron Crown Gin" 
stand on the sane basis and may be registered, I do not see why a 
third trade-mark of the same class as "English Crown Gin" may not 
be also registered. Besides the other narks are such as to help 
make out a sufficient distinction. 

I think the Examiner .ay properly register the mark, and 
accordingly so ditect. 



of 

1 L k k H A E ^: B E IT D E L, 

DeclflGd Feb. 26, 1877 . 

RccordecL Vol. 17, Pap.e 507 . 

oOo 

SPEAR, COIv&IISSICITER: 

The nark for v/hioh registration is asl^ed consists of a 
star of golden color and the words "Golden Star**, and it is ap- 
plied to coininon oysters. 

Registration is refused by the Examiner for the reason, 
as he alleges, that the applicants do not appear to be entitled to 
the use of this marl^. It is shown, as he represents in the regis- 
tered trade marifcs of the Portland Padding Co., referred to specifi- 
cally in his letter. The marXs in those cases consist of a star 
and the \7ord "Star" without limitation as to color and these marl;s 
are applied to canned provisions. 

The rriark for which registration is now aslced does not 
appear to me to differ from that already register<;d sufficiently 
to be distinguished by the public from the mark referred to by the 
Examiner, and as the marks are applied to the sa;:ie class of goods, 
registration must be refused. 



^ 



A-ni ^^> ^''^"^'^ ^ ^^"^ h 0^')''^'^^ '^■'"''•' 



of 
XHEO.DO.RE W. BjLJRGER, 

Decided Marcli 2, 1877 . 



Hot ?LOGOi-dod 



-oOo- 



DOOLITTLE, ACTIIIG COI.LIISSIOIIER: 

"Peculiar configuration given to a particular article of 
trade", is, if new and original, expressly made by lar the subject 
of a design patent, and there is no provision of law v/liatever 
which even intimates that such matter can be registered as a trade 
mark. 

The Examiner has given this subject very full and care- 
f*ul consideration, and his objections are fully concurred in. 



A P P L X C. A T 1 £ TT 
Of 

Deoidcd I.Iarch 2, 187 7. 

Recorded Vol. 17, Pap;e 510 . 

oOo 

DOOLITTLE, ACTIIIG COiC.:iSSI OriER: 

Applico.nts seek to register the words "No Brand" as a 
trade-marko The Exaiiiner objects on the ground that these v/ords 
do not ataount to an arbitrary symTool, but are a mere announoemcnt . 

I thinly the words have a very different function than a 
mere announcement. If that were the object of their use siler.ce 
would have been better than speech. 

The matches are the "Ho Brand" brand, and they can be 
used to designate the origin or ownership just as well as the 
v/ords "No Such" which might be ap^'lied to Tobacco or the -word "Un- 
known" applied to Y/hiskcy. 

Tae words "ITo Brand" are the brand , and that there is 

all there is of it, and being registered and us(;d as a tracie-mark, 
the words would be as fanciful as any that could be used, indicat- 
ing anything but what they are lisually intended to iean. I fail 
to see the pertinency of the Lindsay case. 

The decision of the Examiner is reversed. 



^ 



APPLiC.ATl^N 
of 
WHEELER. LIADDEII 8: CLEI'.ISON :mMUFACTURIIIG CO .. 

Decided I.Iaroh 22.1877 . 

Reoord<)a Vol. 17, Pap;e 554 . 



-oOo- 



DOOLITTLE, ACTING CCin.IISSIOIIER: 

Applicant desires to register the tenn "Thin baclc" as a 
trade inarli on saws. It is generally understood that a thin bacX 
is an absolute chEractoristio of saws; but it is also a relative 
quality in connection v/ith the cutting edge. 

In the manufacture of rectilinear sav."s after the teeth 
are punched along the edge of the blade, the blade is hardened, 
tempered and haimnered, and is then ground to reduce the thicXness 
of the metal fron the teeth toiTards the baclc. Circular saii7s, for 
the most part, are of uniform thickness. Appleton's Diet. 

YJhether, therefore, tJio term "thin baclt" is IcnoTrn or un- 
Icnown to the trade as a technical term, it is simply a deccriptivc 
expression r/hich any one jias the right to use in describing a saw. 

The tra-'C marks that the law permits to be registered 



are those arbitrary in nature and fanciful in signification, and 
certainly ajpl leant might have been more fortunate in his selec- 
tion if that was all which he desired. 

The decision of the Examiner is aiffirmed. 



^^ 



5 



I 




J^ '^'^p^-' 






. l^M 



APPL1C.ATI0.N 
of 
HIPPIIHEIMER & MAURER 

Deoided April 7, 1077 . 

Recorded Vol. 17, Pap;e 571 . 

oOo 

DOOLI^rTLE, ACTITIG COIEJISSICIJER: 

These applicants desire to register a cut or -print, il- 
lustrating a "scene on a race course", without any descriptive 
matter thereon, and which they prJnt and sell to customers, wlio 
may apply the same to articles which they may sell or manufacture. 

The Examiner of Trade Liarlvs has refused the application 
on the ground, that this symbol is a trade marl; and registrable, 
if at all, under the trade marlv statute. 

Applicants describe this matter as a "label". Panciful 
symbols or words, arbitrarily selected, to be placed upon a cer- 
tain class of goods to denote their ownership or origin, and dis- 
tinguish the goods from those of the srj.ne Ivind made by other per- 
so'ns, are trade marks, and words of ordinary signification giving 
the name of the manufacturer or place of manufacture, quality of 
goods, directions for use, ccc, are labels. The matter in hand 
does not fall ?/ithin either of these definitions. 



Heppenheiincr & Maurer, Sheet -2- 

This print is neither a trade irxark nor a label, nor at 
the same time such a Y/orK of art as to entitle it to protection 
under the copyright law, 

. Section 5, of the copyright act of June 18, 1G74, pro- 
vides: "That in the constr-'.icticn of this act the vrords "engrav- 
"ing," "cut", and "print" shall he applied only to pictorial 11- 
" lustrations of v/orl^s connected v/ith the fine arts, and no prints 
"or labels designed to be used for any other articles of manufac- 
"ture shall be entered under the copyright law, but may be regis- 
"tered in the Patent Office. And the Commissioner of Patents is 
"hereby charged with the supervision and control of the entr^^ or 
"registry of s^ich prints or labels, in conformity with the regu- 
"latlons provided by lav; as to copyright of prints, except that 
"there shall be paid for recording the title of any print, or la- 
"bel, not a trade marR, six dollars, vrtiich shall cover the expense 
"of furnishing a copy of the record, under the seal of the Com- 
"missioncr of Patents, to the party entering the same," 

Under the section cited, a print, to constitute the sub- 
ject of a copyright must consist of a pictorial illustration of a 
v/orh connected with the fine- arts. Pictorial Illustrations or 



prints to be used on articles of manufacture^ not con^'.ected v;ith 



I 



fl 



9 



Heppenheimer & Maurer, Sheet -5- 
the fine arts, are to be registered at the Patent Office. 

The print forming the siibjeot of this application, has 
no oonnootlon v/ith any worlc of art, but the design of its authors 
is to dispose of it to dealers and others who may wish to attach 
it to various articles of manufacture. When the latter named 
class of persons come forward to register the same as a trade 
mar^, it will then be proper to consider it in that light. 

It is to be noted also, that this law does not, as in 
tracle-marlvs, require the registrant of a print to state a partic- 
ular description of goods to which he intends applying the same, 
nor ill fact that he intends to apply it, himself, to any descrip- 
tion of goods. 

The Examiner relies upon the decision in the carrC of ¥/. 
Simpson & Sons, O.G. 333, to sustain his action. In that case 
an attempt was made to register as a part of a label, a fanciful 
figure to be used upon a certain class of merchandise therein de- 
scribed, and the purport of that decision simply was that a label 
and a trade-marlc under the lav;, vrere'not interchangeable matters, 
and that the distinction between the same, as above given, must 
be observed in Office practice. 

The Examiner states that a very similar illustration or 



c 



Ileppoinheiner & Llaiirer, Shoot -4- 
print has been reoer.tly copyrighted at the Library o:? Coiigross, 
but I do not GOG of what force that fact has upon this application 

The distinctiveness botw<;en trade marks, labels and 
prints must be observed/ but resardins this matter as a print to 
be attached to no particular description of goods, but only capa- 
ble of being bo attached, and the object of its ovmers being sim- 
ply to protect themselves in the making of the same I tliinlv the i 

i 

doctrine in the Schuinacher 8c Ettlingor case 9 O.Go 594, is the | 
correct one, and should be applied here, and that is, that the 



I 



protection ¥;hich applicants of this character seek and which a 
certificate of registration will give thorp., is no more than pro- 
tection in the exclusive right to make and sell this particular 
print, for the reason that it is not connected with the fine arts, 
nor applied to any description of merchandise. 

Upon amending their application in the matter of descrip- 
tion as herein suggested the prriit Y/ill be registered. 

The decision of the Examiner is accordingly reversed. 




APPLiC.AT10.TI 
of 
GEO.. W. K 1 IT G, 

Deoldcd April 27, 1077 , 

Recorded Vol. 17, Far.e 587 , 

oOo 

SPEAR, coLc.n SSI oner: 

7he print sought to bo registered is v/ithout doubt a 
label. It contains the imprint of the article, the directions 
for use, price, person by v/hom it is prepared and place <5;C. There 
are only two words whioh could, in any sense, be used as a trade- 
mark, and they appear to be used rather as descriptive words, sub- 
ordinate in place and type, and not intended at all as a trade 
mark. I think, the case is such as that of Orcutt and Son re- 
ported on page 102 of Coim-niss loner's Decisions of 1875. 

The decision of the Examiner is reversed. 



4 



/-/>--/f' -^^^ 



A£PIilG.ATXO.]£ 
of 

k A 11 3. R 1 L k s^AUGZLIIl 
Deoidod May 3, 1877 . 



Endorsed on Examiner's Brief. 



-oOo- 



LOQLITTLE, ACTIIIG COLl.IIGSICKER: 

Words obiGotionaule as trade mar!k.s as denoting the qual- 
ity or characteristics of the things to which they are attached 
must ba graim-iatioally spealcin^, adjectives and are generally used 
in connection \7ith the nai'ie of the thing they describe. Now the 
¥;ord "utility" is a noun. It is a naine, and not the name of the 
article to 7/hioh it is attached. Standing alone it describes noth- 
ing, and to call a table the "utility" table would be ungranEiati- 
cal and ncaningless, unless the speaker had in mind what applicant 
nov: has, a fanciful name by which a certain class of tables were 



!known. 



If the adjective useful, or good, etc, had been appro- 



priated, the objection of the Examiner would have been well taken; 
as it is, I think his decision should be reversed. 



I/' 



-^ 







A P P L 1 C. A T I N 
of 
IILLIAML. TETER, 

Decided Liay 3, 1077. 

Re corde d Vol. 17, Page 420 . 

oOo 

SPK^R, ccivi:.:i SSI oner: 

This appeal is taKen from the refusal of the Examiner of 
to register as a trade mar!k that which is described as follows :- 

"Lly trade mark consists of a red color applied to lamp 
"oil (Kno\m to t?ie tra-ie as kerosene)". 

He states in his specification that this color is impart 
ed to the oil for the purpose of giving it a distinctive mark by 
which it can he^ recognized as the article prepared and sold by him 
It is represented, and appears to l)e true, tliat the coloring mat- 
ter does not affect and is not calculated to affect the oil in any 
way whatever, excepting as a mark to distinguish it. The quali- 
ties of it as oil for illuminating purposes are precisely the 
same. 

The mark is unquestionably a departure from the ordinary 
method of distinguishing goods of this or any class. It is cus- 
t^jnary to impress upon the article or affix to it the mark by whicK. 



9 



i> 






m. 



9 



W.L.Teter, Gheet -2- 
\7hiGh the marker or seller desires it to be Kno^Tn, or, in the case 
of fluids, these marks are impressed upon or affixed to the ves- 
sels \7hich contain them. In this case applicant imparts the char- 
aotoristic mark to the fluid itself. 

The Examiner's objection is that "the matter claimed as 
••the trade mark enters into the article which is sold, and thus 
becomes a component part thereof." 

This is, in a certain sense, true, and if this coloring 
matter, v/hich is thus made to become a component part of the oil, 
were an ingredient of the oil, then the objection v/ould be well 



founded. 



In the case of the Delav/are and Hudson Canal Co. vs. 



Clark , Vol. 1, O.G., page 279, it was said: 

"ITor can a g oneiric name or a naiae merely descriptive of 
••an article of trade, of its qualities, ingredients, or character- 
•'i sties, be employed as a trade mark, and the exclusive use of it 
•'be entitled to legal protection. •' 

Now if, in tliis case, it were a characlLeristio or quali- 
ty of the oil, or a color natural to the oil, and necessarily, or 
even incidentally, imparted to it in its manufacture, then the ob- 
jection would hold good, but the coloring matter does not form any 



V/.L.Tcter, Gheet -S- 
essential part of the oil as an illiuninating fluid, and, as was 
said above, does not affect it in that respect in any manner what- 
ever. 

Nothing is more difficult than to define in any general 

terms v/hat may "be a lawful trade-mark. The ingenuity of man may 
vary such marks infinitely, nor need there be any effort or care, 
so far as I can see, to compel registrants for application of 
trade marks to pursue any beaten path, or come v;ithin any exact 
definition. The only thing to bo guarded is that the natural 
rights of the public be not infringed, Tliis is all that the law 
attempts. It is provided that a mere name shall not be register- 
ed as a trade mark, manifestly for the roason that it may be the 
name of another person, and this is the only principle which the 
law has set up. Plainly coming within this law, and the same prin- 
ciple is all that Glass of marks which indicate the characteris- 
tics of an article, and all descriptive words used in the ordinary 
signification of the language. The ob^jecticn to their use as ex- 
clusive marks is that such use is a common right not to be appro- 
priated by any one person for exclusive ovmership. This' is a dis- 
tinction v/hicii the courts have generally made. 

In Stokes v s. Landgraff , IV Barb. 3.C.,609, it was said: 



o 

o J 






U.L.Tcter, Gh let -4- 

"In all cases where names, signs, marks, brands, labels, 
"words or devices of any Icind can be advantageously used to desig- 
nate the goods or property, or particular place of business, of a 
"person engaged in trade or manufactures, or any similar business, 
he may adopt and use such as he pleases, which are adapted to that 
"end, and have not been before appropriated." 

The decisions in trade inarK cases f^arnish abundant il- 
lustrations of this principleo All that is required is that the 
mark s2iall, either by original signification or by association, 
point to the origin or wonership of the article which it indicates 



and that it nhall not give monopoly in the sale of any goods .than 
those produced or sold "by the person claiming the mark. It is 
this which excludes generic names, names of qualities, names of 
persons, or any such descriptive ?7ords as are used in their ordi- 
nary or legitimate signification. But, on the other hand, avoid- 
ing this barrier, there is no limitation whatever. "Any contriv- 
ance, design, device, name, symbol, or other thing may be employed 
as a trade mark." Filly vs. Fassett , American Trade Mark Cases, 
page 551. And the only limitation added to this broad category is 
that v/hicli I have stated above. 

In the present case applicant is represented the manu- 



o 



ir) 



V/.L.Tetc3r, Sheet -5- 
facturer of a certain liquid substance used for illumination. 
Instead of affixing the peculiar sign, iThich is to indicate the 
ownership or origin of his manufacture, to the casl^ or other ves- 
sel in which it is to be sold, he adopts the plan of imparting 
that marii to the substance itself. Apparently his plan is the 
better, since it avoids the danger of refilling his casXs \Yith an 
inferior article by unauthorized persons. The marlv goes with the 
manufacture to the point of consumption. It is certain, distin- 
guishable, not to be effaced. As a marli it seems entirely suffi- 
cient. Does it infringe upon any rights belonging to the public? 
Can it be placed in the same category witii an article put upon the 
marl:et and painted red or in any other color? Undoubtedly it 
v/ould be right to refuse registration any such marX as paint of 
any color applied to an article. The purpose of painting an ar- 
ticle is to give it covering, as well as color, and it is a matter 
of com. :on use, v/hatever the color; but in this case, the coloring 
is a mark-pure and simple- an arbitrary sign, for the applicant 
is not claiming a red color applied to any fluid, nor a color ap- 
plied to a fluid which may be the natural result of the composi- 
tion of it or of some ingredient thereof, for, as I have said, it 
does not arise, either necessarily or incidentally, out of the ma- 



U\) 



H| 



V/.L.Tcter, Gh(;ot -G- 
terial itself, but is foreign to it, and introduced into it simply 
for the purpose of designation. 

For these reasons, I think the mark should "be registered 
and accordingly roverse the decision of the Examiner, 

April 19, 1077. 



Subsequent to the ai.-^ove decision, it was discovered that 
certain patents had been granted for alleged improvements in oil 
or in methods of putting up certain oils, and the case was brought 
baOis: for reconsideration. The patent nearest the subject-matter 
sought to be registered as a trade mark is that of Porter, Ho» 
146,778, dated Jan, 27, 1874. 

Substantially, the patent is for a method of preparing 
illurainating oils for sale by mixing therewith any coloring mat- 
ter soluble therein, thereby distinguishing the heavy. oils, or the 
differing gravity of illuminating oils. The question of the va- 
lidity of the patent is not within my jurisdiction. It must, 
however, be for an invention. That invention, if it be Jiny, must 
be in the method of making or marking the article, or in the ar- 
ticle made. There is nothing in the patent to indcate that the 
oil, as an illuminating fluid, differs from any other oils of its 



M 



Wl 



?/.L.Teter, Gheet -7- 
kind, or that there is anything new or inprovod in the method of 
producing the oil itselfo The whole scope of the patent is Un- 
ited to the method of marlcing. Assuminc then, the patent to "be 
a valid one, it must he for the method of marlcing; for an article 
marlved, would not, without any other element of limitation or def- 
inition. Toe considerGfl an invention, nor could the method or im- 
provement in the art, though patei'itable, enter as an element into 
the article to make that patentable also. The patent, ther, on 
the theory of its validity^, is for a method of producing marlvs for 
a certain class of goods, marks in ray judgment, proper to distin- 
guish this class of goods, and within the terms of the law author- 
izing registration. It does not necessarily follow then, that the 
patentee has used the particular color specified i:y the applicant 
for registration as a mark to distingikish his goods. The inventor 
of a mode of marking is not, necessarily, the user or cfwner of all 
the trade marks producible by that method, v/liatever right he may 
have in his improvement in the art« But the statute provides: 

"The Commissioner of Patents shall not receive and re- 
"cord any proposed trade-marie which is not and cannot become a 
"lawful tra:Ie mark, or which is merely the name of a person, firm, 
"or corporation unaccompanied by a mark sufficient to distinguish 



w 



IJ^ 



W.L.Teter, Shoot -8- 
"it from the same name when used by other persons, or which is iden- 
"tlcal with a trade marK appropriate to the same class of merohan- 
"dise aiid beloneing to a different ovmer, and already registered or 
"received for registration, or v;hich so nearly resembles such last 
"mentioned trade mark as to Ibc likely to 'deceive the public." 

There appears to be nothing, therefore, in the facts be- 
fore the Office to justffy under the statutes the rof-asal to reg- 
ister the trade mark. Not only in there wanting evidence as to 
the registration or reception for registration of the sajne mark 
appropriate to the same class of goods, but there is no conclusive 
proof that any one ever appropriated the mark to the class of good5 
designated, 

I am the m.ore inclined to gra.t the certifica-te since 
applicant has, so far as I am auare, no remedy, by appeal, for my 
refusal. If there be any conflict between the registrant and the 
patentee, if in adopting or applying this specific color in the de- 
scribed way, he use any method or article which is the property of 
the patentee, there is ample remedy in the courts. 



The certificate may be issued. 



V^ I'*' 



I 




J Uf 



of 
G 1 0.. j2» H 1 L L & JC ^. , 

Deolded May 12, 1877 . 

ReaordGd Vol . 17, Pap.e 405 . 

oOo 

SPEAR, COLnvilSSIOlJER: 

This oase is, in sone respects, a doubt f\il one, the vrord 
sought to "be registered ociiiing, very near the class of purely de- 
scriptive ?7ords, yet the v;ord "tactless", as applied to "boots and 
shoes, is certainly not purely descriptive, not in the sense in 
which Yie should use the words leather, India rubber, iTater proof, 
and the lil^e. It is not an obviously descriptive Ford, and, I 
think, may be classified with that registered in the case of 
Glincs , CD., 10V5, page 97, 

The decision of the Examiner is therefore, reversed, and 
the trade mark villi be registered. 



JO 



of 

lARJiER BROTHER ^, 
Docldod Hay 25, 1877. 

Rocorded Vol. 17, Pap;e 414 . 

oOo 

DOOLITTLE, ACTING COlvLiIGGICNER: 

LooXing at this article as a single thing, an entirety, 
as a "stooKing supporter" so olaimcd in tho patent and doscrilDCd 
in the present application, I hardly think the tomi "duplex" is 
descriptive. 

Descending to an analysis of its parts it would be 
found to be "multiplex", but regarded as a single article, its 
parts all connected, a:-d all necessary to constitute the completG 
thing - it appears to me thait to be "duplex" the entire article 
should be doubled - there should be a pair of them, as \io would 
speak of the pair of stoclvings, to v/hich the article is to be ap- 
plied. 

Without, however, entering into a discussion as to the ■ 

fine distinctions of the v7ord that might be made, I arri disposed to -^ 
give the applicant the benefit of the doubt. 

Neither do I think the term deceptive, as the simple in- 
spection that v/ould be given by the public to the article before 
purchasing would inform them as to the character of it. 

The decision of the Examiner of Tyale Llarks is therefore 
reversed. 



'■* 



■A 



tf 



i 

mi 



.J^., 



64-:a 



t/ 



APZL1C.AT10.N 
of 

Decided liay 51, 1077. 

EndorsGd o n PJxainincr ' s Brief . 

oOo 

DOOLITTLE, ACTIHG COIilllSSIOlIER: 

The deoision of tho Exaniner is affirned. The tern and 
"brand doscribed are purely fanciful' A la'oel is simply designed 
to denote the naiae of the inanufaoturer, or place of rianufacture, 
quality of goods, directions for "use &o.,and not to cover arbitra- 
ry matters of fanciful signification. 

It is decidedly fancifij-l to call the oigaj's of Smith & 
Rising, "Nicots". 



■Jf. 



JU 



APPLlC.ATI.^li 
of 
SAMUEL RO.BBlli^, 

Deoldod Liay ol, 1077 » 

E ndorsed on Exainincr ' s Br ief. 

oOo 

DOOLITTLE, ACTIIIG COlCn SSI ONER: 

The dooision of the Exaninor is afrirraed. "Peerless" 
is regarded as an entirely fanciful arbitrary term when applied 
by one person to an ointment or any other article of manufacture 
for the purpose of distinsuishing the saiue from similar aJrticles 
made by others. 



.« ^ 



of 

K AER 1 & C.^MPA1TY, 

Decldod June 22, 1877 . 

Recordocl Vo l, 17, Pap:e 155 . 

_ ooo 

DOOLITTLE, ACTIITG COI-CilSSIOIIER: 

Applioants describe themselves as engaged in tlie manu- 
facture and sale of Agricultural Iraplemcnts generally. They wish 
to cover the whole class of merchandise called "agricultural im- 
plements", and every description of goods comprising such class. 
It is precisely a parallel case to that of Smith et,al. vs. Re^^n- 
olds ^: Jacobs. (3 O.G. 214),- the doctrine of which was reiterat- 
ed by the Coirardss loner in the case of Boehm <3: Co., (8 O.G. 319). 
It would appear from this decision, that where an applicant in- 
tends to cover a whole class of nerchandise it is unnecessary to 
mention every particular description of goods comprised in such 
class — the law only contemplating, that v;hen he intends to confine 
himself to a particular d(5Gcription of goods in any class, that he 
should mention the ssjne. To hold that vrherever he intends to 
cover the whole class that he should mention every description of 
goods v/ithin that class would render the lav/ somewhat absurd in 



-1 \J 



Manny & Co., Sheet -2- 
its operation; as it would taKo si'eat space and tine to complete 
the list of all articles wanufactiired in some classes. 

As was observed in the case of Beohm it may be a very 
bad practice t^ to use such comprehensive terms, but the evil re- 
sults appear to fall on those applicar.ts alone who talkie the risX. 
The evil resulting to an arplicant in such case might arise as it 
did in the Smith & Reynolds case, by some one else being able to 
sho;v that they had adopted t2ie same trade mark to a particular de- 
scription of goods comprised within a general class, subsequently 
adopted by the complainants. The court holdiiig, that the regis- 
tration not being valid as to the whole extent was not valid in 
part; but this is not the concern of the Office. 

In viev; of the above doctrine, I think the position of 
the Examiner, that a subsequent applicant who desired to register 
this mark upon a certain article of the class Y/ould not be antici- 
pated "oy the present registration is incorrect; but a previous 
registration upon any article of this class would be a proper ref- 
erence to the application nov; m.ade. 

The decision of the Examiner of Trade Harks is reversed. 



1 

i 

APPL1C.ATX0.N 
Of 

THEODORE C U R R A IT, 

Order Given June 28, 1877 . Jj£t^ 

En dorsed oil Examiner's Brief . 

qOo 

DOCLITi'LE, ACTIIIG COIvEIISSICUER: 

Inasmuch as there has been no examination l^^i this ease, 
f^jrther than to determine that the matter priisented for registry 
is not a lav^^ful trade-mark, I am of opinion that the practice 
should be so modified as to admit the proposed amendinent. This 
order may apply to all similar cases. 



u 



APPL1C.ATI.0.N 
of 
C.O.RNWALL 8c BROTHER, 

Decided Juno 29, 1077 . 

Recor ded Vol, 17, Par;e 4CG . 

oOo 

DOOLITTLE, ACTI IIG COlC.il SSI ONER: 

Applicants seelv to register an arrangement of a star and 
crescent applied to soap, as their trade marK.. They are referred 
to a registered trade marie, consisting of the figure of a star 
alone, also applied to soap. And it is contended t>y the Examiner, 
that the emi lo^.nnent of the former combined symbol would be ll!k:ely 
to deceive those desirous of purchasing soap having' the last named 
brand. 

It is a question of judgment and is to be determined up- 
on the probabilities of the case, as was substantially held in the 
very similar case of Imbs, 10 O.G.,46o. 

The flags of at least tv/o nations are distinguished by 
almost the same difference in symbol as that employed by applicants 
to distinguish their soap from the registrants, to whom they are 
referred. 

The flag of Egypt is a crescent on a red ground, and the 



u 



m 



^ 



J. J 



Corn\7all cc Br o., Sheet -2- 
Txirlcish man of v/ar flas is a cresGcnt on the satriC colored Ground. 
There is no mistalcing one flag for the other by persons of the 
sloghtest discerrjnent; and I think the sojue rnaj^ be said when those 
symbols are applied in a similar way to the soap of tv/o different 
owners. 

The decision of the Examiner of Trade Llarks is there- 
fore reversed. 






B Jl 



I 



I 



AZ£IiiC.ATiO.N 
of 
FAR].IER'S FRUIT PPvEGERVING C0 .> 

Decided July 5, 1077. 



Recorde d Vol . 17^ Pago 4C8 , 



-oOo- 



DO L I T T liE , A C T III G . C OlCil SSI ONER : 

As to the matter of the ~crd "Rising Sun", and the rep- 
resentation of the jjta^d rising sun, to be used either alone or 
both together, the decision of the Comiuissioner in the case of 
Weaver, 10 O.G. 1, so completely covers the case and controls the 
ptactice, until reversed by the Coimaissioner, that I fail to un- 
derstand the action of the Examiner in ignoring it. There is some 
doubt as to the second point. Preserved fruits and vegetables are 
either are a distinct class of vaerohandise, or else a description 



of goods comprised in the general class of groceries. Taken i 



Xi 



its broad sense thu word "preserves" alone covers the matter to 
which the trade marX is to be aprlicd, and correctly indicates the 
class of merchandise prepared by the Farmer's Fruit Pres.';rving Co. 
Viev/ed in this light the Examiner's decision must be re- 



versed. 



i 



I 




c 



f 




'.yi- 



of 

^ 0. R H W A L L & B R 0. T H E R S 

Decided July 7, 1877 . 



Recorded Vol, 17, Pap.e 475 



■oOo- 



DOOLITTLE, ACTING COIvCJISSIOlIER: 

The trade laarlc sought to be registered, consists of the 
word "Dublin" to be printed upon labels applied to boxes of soap:- 

It is a general rule that the name of a district, town or 
city cannot be appropriated as the exclusive property of any one. 
High on In;iunctions, Sec. 673; Bisphain Eq. 411; Wolfe vs. Goulard, 
18 Hov/'s. Pract, Rep, G4; BrooXlyn Yfnite Lead Co., vs. Masury ^25 
Barb. 416; Nevnuan vs. Alvord, 49 Barb. 588; Candee vs. Deere Sup. 
Ct. of I lis., 10 Am. Law Reg. U.S. 694; Delaware & Hudson Canal Co. 
vs. Clark, 13 V/allace 511; Glendon Iron Co. vs. Uliler, 6 O.G. 154; 
Lewis l^. Green, CD. 8 O.G. 729. 

Are there any cir cuius tances which maKe the present appli 
cation an exception to that ru-le? 

Applicants do not raake their soap in Dublin, Irelanjjl, 
but in this country, and therefore contend that the term is not 
descriptive in any sense, but an entirely arbitrary' symbol. 



Cornv/all £<: Bro.,Glieot -2- 
In the case of Green, abovo cited, the CommlEsioner in- 
dicated the practice of the Office in regard to these geographical 
names. If they are descriptive of a certain place or locality 
vrhere the goods or articles to which they are to be applied are 
prodmced, then they are objectionable on the same ground that all 
merely descriptive T/ords are objectionable as trade marks. It 
would appear that it was solely in respect to this objectionable 
quality that the Supreme Court refused to extend its protection to 
the term "Laclcawanna" applied to coal obtained from the district 
bearing that nainCo 

• "It is obvious", said the Court, "that the same reasons 
which forbid the exclusive appropriation of generic names or of 
"those merely descriptive of the article manufactured and vmich 
"can be employed with truth by other manufacturers, apply with 
"equal force to the appropriation of gepgraphical names, designat- 
ing districts of country. Their nature is such that they cannot 
"point to the origin (personal origin) or ownership of the arti- 
"cles of trade to Y/hich they may be applied. They point only at 
"the place of production, not to the producer, and could they be 
"appropriated exclusively, the appropriation would result in lais- 
"chevious monopolies. Could such phrases as "Pennsylvania vrneat". 



1 



Cornwall & Bro., Sheet -3- 
"Kentuolcy Hemp", "Virginia Tobaoco", or "Sea Island Cotton", he 
"protected as trade-marlcs; could any one prevent all others from 
"using them, or from selling articles produced in the districts 
"they describe under those appellations, it would greatly embar- 
"rass trade, and secure exclusive rights to individuals in that 
"which is the comnon right of many. It can "be permitted only 
"when the reasons that lie at the foundation of the protection 
"given to trade marks are entirely overlooked, x x x x x Nothing 
"is more common than that a manufacturer sends his products to 
"market, designating them by the name of the place vmere they were 
made. But we think no case can be found in which other producers 
"of similar products in the same place, have been restrained from 
"the use of the same name in describing their goods." 

And after discussing the various cases cited the court 
concluded — "It must then be considered as sound doctrine that no 
"one can apply the name of a district of country to a well known 
"article of coimiicrce, and obtain thereby such an exclusive right 
"to the application as to prevent others inhabiting the district 
"or dealing in similar articles coming from the district, from 
"truthfully using the same designation." The language hero quoted 
would not, it appears to me, be applicable to a geographical name 



i 



Cornwall & Ero., Sheet -4- 
wholly fanciful in its signification. 

Further it does not appear that the elercent of fraud en- 
ters into this application. There is no evidence of the fact tha 
there is any soap on the imrket knovm as "Lublin" Soap. If such 
were the fact the Office would be justified in ref^asing registra- 
tion on the ground, jjhat the adoption of the saiie title by appli- 
cants would be deceptive and a fraud upon the public. "Dublin 
Brown Stout" has a vj-ell knovm reputation. The fact of its notori- 
ous use would be conclusive evidence of fraud as against a citi- 
zen of another place who asserted tlie right to use the teria as des 

« 
ignating his product. 

So, in Alvord vs. lle\i.auan, parties in the State of New 
Yorls: \7ere enjoined from using the word "Alvron", a name of a tovm 
in Ohio, upon cement; the purpose evidently being to induce the 
public to believe that the article made by the defendants in New 
York, was the the same as that made by the plaintiffs who were in 
Ohio. It v/as a case of an attempted fraud - although it was also 
determined that the plaintiffs could acquire no 'exclusive right to 
the use of the word as against anyone producing a similar article 
at the saine place. 

As to any deception in this particular place, in viev; of 



i 



1 



1 



I 



Cornwall fi: Bro., Sheet -5- 
the faot alluded to by counsel for applicants, of the exclusive 
use throughout the count rj^ of labels ap:::liod to soap manufactured 
by firms in this coirntry, bearing the titles "Irish", "LimericX", 
"Scotch", ,etc.,the public generally have become aware of their 
purely fanciful signification and v/ould not be very liKely to be 
deceived by the addition to this medley, of the vzord "Dublin". 
Neither wouid the public probably be convinced that a sudde:: im- 
portation of soap from Dublin had tal^en place. If the symbol was 
the name of a well known district or city in this country the case 
might be ?^holly different. "Philadelphia", "New Yorls:", Baltimore" 
attached to soap might havi an entirely different signification. 

It is thus found impossible to lay down a rule that would 
cover all cases of this Ivind. 'Each case must stand upon its 0T,7n 
ground. A certain geographical name applied to an article might 
be either descriptive or deceptive. Another geographical name ap- 
plied to the same article might be neither o 

My conclusion as to this application is, that the word 
"Dublin", as here applied, is not intended, and has not the effect 
of a geographical word; and that in view of the peculiar circim- 
stances of the case, is also not deceptive. Its registration will 
therefore be allov/ed. 



IJ 



APPL1C.AT10N 
of 
FREDERIC. H. KAL L,_ 

DGolded July 7. 1077 . 

Recorded V ol. 17 , Pap.e 472 . 

_ oOO 

DOOLITTLE, ACTIIIG COLLIIGSICIIER: 

It is thousrit the Comi'iiiss loner's decision in the case of 
Green, 8 O.G. 729, covers this case. 

Some of tlie circiuristanoes are also similar to those in 
the "Dublin" case, this. day decided. 

The decisioi: of the Examiner is therefore reversed. 



r 




XJ 



AZZlilC.AT.I_0.lI 

of 
^HiiZAl D1C.K, 

Deoldod July 15. 1877. 

R ecor ded Vol. 17, Page 4 80 . 

oOo 

SPEAR, COILIISSICIJER: 

I have doubts whether the words used in this connection, 
are strictly descriptive; and further it appears that these words 
are recognized as a trade mark, rightfUl_ly^in use on the 8th day 
of July 1870, and that they had so been used for a long time by 
the applicant unquestioned. 

For these reasons the decision of the Examiner is re- 
versed, and the trade mark may be registered. 




XJ 



L 



u 



J.a>^ 4^ 



APPL1C.ATI.0.II 
of 
C.KA^. F. HUKLBURT, 

DoGldod Auf;. 5, 1077 . 



Endorsed on Examiner's Brief, 



■oOo- 



DOOLITTLE, ACTIIIG COi£.:i SSI OTTER: 

In viGw of the late practice of the Office in matters of 
this I^ind by which it has besn held - that the filing of an appli- 
cation for the registration of a trade laarlv of natter which is 
clearly a label, and the payment of a trade marls, fee thereon, con- 



PtfiwwrtJiir TTtmonf'*'''"'^' 



stitutes a mistake in law, the law requiring that labels shall not 
be registered as trade narks, the fees in these cases will be re- 
turned in accordance with Section 40S8 Revised Statutes. 



J 



Of 

R 2 R E E 1 ^UllEER, 
Decided Aur, 24, 1877 , 

Recorded Vol. 18, Pa^e G2 . 
oOo 

DOOLITTLE, ACTITIG 001:0^1 SSI ONER: 

Applicant originally desGrib'.id his trade-marlv as con- 
sisting of "a perforated paper covering which is applied to the 
"■bottom, top or sides of the "boxes, or said boxes may be complete- 
"ly covered and surrounded by such a covering of perforated paper 
"or the representation thereof. 

"The said trade inarK may also be used by applying a rep- 
"resentation of perforated paper in suitable manner, to the car^ 
"show cards, or other notices ¥/hioh advertise the said boxes to 
"the public." 

This was objected to on the ground that the matter de- 
scribed did not canst itute a trade-marl^; that v/hat was sought to 
be protected was a species of merchandise itself and not an arbi- 
trary symbol to be applied to 'merchanidse. V/hereupon applicant 
amended his case to read "The said trade mark consists of a per- 
"forated paper which is placed flat against the bottom, top and 



i 



'i 



1^ 



/€' 



R. one i dor, Sheet -2- 
" sides of the boxes, or against either of them, or of the repre- 
"sentation of such perforated paper." 

The Examiner reiterated his objections and oited the de- 
cision of Judge Johnson in the case of I-Iarrington vs. Libby, since 
published in 12 O.G. 108 - setting forth that the forras and mate- 
rials of paclcages to certain articles of merchandise could not bo 
claimed as trade-marXs - an enveloping package hot being a name, 
symbol or assertion of origin or wonership. 

Again the applicant amended his description as follows :- 
"The trade mark consists of a series of circular marks applied to 
"the labels v/hich is placed against the outside of each of the 
"boxes. The label is to be provided with; large numbers of said 
"circular marks arranged in rows, as shown in the fac-simile . The 
"said trade mark is effectually produced by punching or embossing 
"the label, so as to produce the circular marks, but may also be 
"formed by printing the circular marks upon said label in suitable 



"colors. " 



The Examiner still insists that the amendments do not 



avoid the objections urged against the original application, and 
urges that, "if the applicant hal confined himself to a deiinite 



"and precise symbol cut out of perforated paper, and applied to his 



i^y 



,fw 



R.Sneidor, Sheet -S- 
""boxes, the application might have been allowed, x x x. There is 
"an indefinite and comprehensive appropriation of public property" 

I agreo with the Examiner in his exposition of the law- 
relating to the requisite qualities of a trade marR, and the ap- 
plicant in his arguments and by his amendinents appears also to ad- 
mit the soundness of his position. 

The object of the last amendment is to obviate the ob- 
jection that the traie mark consists of the material knoi^ra as per- 
forated paper or paste board when used to enclose a box. Let the 
applicant now distinctly disclaim this idea, and restrict his 
trade marX to an impression having a definite shape or figure, con- 
sisting of, or in imitation of a piece of perforated card board to 
be stamped, or otherwise placed upon boxes of his manufacture, and 
the ssjne will be registered. 

Otherwise the action of the Examiner refusing the reg- 
istration must stand. 




^ " 



APPLlC.ATiO.N 
Of 

ED-WARD_WARBIJRG & C.£. , 



i 




'd r^^/ ^ 



Decided Au^. 25, 1877 . 

Recorded Vol. 18, Pap;ft 65 » 

ooo — /^-€:?/ f <f 

DOOLITTLE, ACTING COLCII SSI ONER: 

Applicants ask to have registered as a trade marl^ the 
term "Cachemire-lvlilano" to be applied to blaclc silKs* The term is 
used in connection with the words "R. Gav©ie & Co." and with the 
picture of the Cathedral of Milan. 

If not previously registered in connection with the same 
class of goods, the picture of the cathedral would he accepted as 
a proper trade-mark; taut applicants assert that the "essential 
part of their mark is the word symbol "Cachemi re-Mi lane" 

The decision of the Examiner of Trade Marks on this point 
is exhaustive, I think, and is adopted and affirmed. 

It is as follows:- "The word "Cachemire" or Cashmere" is 
"not arbitrarily selected as a mark for silks, because it might 
"easily have reference to a peculiarity of the silk. It vrould be 
"the appropriate and only appellation for a fabric uniting the 
"qualities of Chasmere and Silk; it might be applied to a species 



^ 



12 



♦ 



E. Warburg & Co.,':hGet -2- 
"of silR resembling Cashmere in appearance, or in the processes of 
"its manufacture. As a matter of fact there is a well known vari- 
"ety of silk, characterized by a soft and lustreless finish, v^hich 
"goes by the name of Cashmere BlaoX Silk. The applicant is there- 
"fore seeking to register the proper naL-ie of an article of com- 
"merce, and his proposed mark would in fact give him a monopoly in 
"the sale of such goods. The law is Y/ell settled on this point, 
and it is sufficient to refer to the decision of the Commissioner 
"in Lawrence & Co. 10 O.G. 103, and to case of Petri dge vs. V/ells, 
"Cox Am. Trade Mark Cases, page 183. The word "Ililano", or Ililan, 
"which by itself might conceivably be a fanciful term as applied 
"to silk, becomes itself significant from its connection with a de- 
"scriptive term, and to allov; applicant to register it would 
"prejudice the rights of those residents of Milan who might desire 
"to manufacture and advertise Milan Cashmere Silks. In case it 
"should be held that the v/ords 'Cachemire I'lilano' are not descrip- 
"tive they must then be held according to the praatico of the Of- 
"fice to be deceptive. They have not the merit of being newly 
"coined like 'Castroleum' or 'Cocoaine' nor of being symbolically 
"used as "Rising Sun" v/hen applied to an article of coimr.erce. They 
"are, in their proposed use, merely a misnomer and are calculated 



1 







^.- 



E. Warburg Cc Co., Glieet -3- 
"to deceive. Amorioan Sardine Co. C. D. 1073, page 03. An in- 
"spection of the goods might or might not undeceive the purchaser 
"but this does not go to the essence of the ob:Jection. The mark 
"is false and tends to deceive^ and that is conclusive against the 
"applicant. The same answer lies to the argument of Attorneys 
"that the name of an inferior article is applied to a superior 
"one. In fact, if the words in question are held not to be de- 
"scriptive the case is so perfectly analogous to that of the Amer- 
"ican Sardine Co., above cited, that further argument is deemed 
"unnecessary. " 






I 



A Z Z L 1 C. A T. 1 0. IT __ 
of 
THE DAUSIvIAl'I AND DRUI~:OHD TOBACCO CO .. 

Decided Aup;. 29. 1877 . 

Recorded Vol. 10, Paf^e 711 . 

ooo 

SPEAR, COI.r.IIGSIOIIER: 

The marlv for Y/hicli a certificate of registration is 
as!feed, is applied to v/hat is Imown as "plug tobacco", and consists 
of a series af transversed marks impressed upon the plug, or print- 
ed upon -paper and pasted thereon. Applicants also propose to use 
the same symbol upon their circulars and bills. 

I understand the Examiner to refuse the registration for 
the reason, that the mark is not of the nature of a trade mark, 
and that its f^anctions and piarpose is not to indicate the quality 
or origin of the manufacture but the measurement of the pieces 
that are to be cut off by the retail dealer. 

Upon the first point it is to be considered, that the 
law makes no limitation in respect to Trade Marks, other than that 
they shall not be such as could not be appropriated by any person 
by reason of the comirxon right of all to use such T/ords or symbols^ 
and with the further general restriction, that the mark shall be 



i}i 



Dausman cc Dinuiirnond Tobaoco Cc^Gheet -2- 
suffioient to indicate origin, ownership, and the like. 

The mark may "be any arbitrary syrabol v/hatever, as a star >^ 
figure of an animal, boar's head; and numbers arbitrarily chosen. 
(See 3rovm on Trade I^IarRs, Par. 87; Boardman vs. Meriden Britannia 
Co., Cox Trade Ilaric Cases, page 4G0, Filley vs. Passett id 530.) 

Referring to the Examinv:..r ' s object ion that the marX is 
designed for fi useful purpose and not for a trade marK, the first 
consideration is, that there is no evidence of this, so far as I 
can discover; and a right to registration not invalidated for any 
other reason cannot be denied on mere suspicion, Nor do I tliinik. 
that it v/-ould invalidate a trade mark, if being significant as a 
trade mark, it should also serve some useful purpose. 

There is some indef initeness in the statement of the 
mark, it being left in uncertainty v/hether it connists of a trans- 
verse, or transverse and longitudinal lines. This should be cor- 
rected. 



In view of these considerations I am constrained to ov- 
errule the decision of the Examiner of Trade i.iarks, and direct, if 
no further objection exists, that this trade mark be registered. 



? 



«l 



Km 



V) 



^'kf^'<^- 



APPL1C.AT1CI1T 

of 
£AME1 BUC.nAii, JR., 

DoGlded Pot. 6, 1G77. 

Endorsod on Exa miner's Brief. 

DO LITTLE, ACTIITG COJn.IISSIOlTER: 

In the cases relied upon Iby the Examiner to sustain his 
action protection was souglit to be obtained on matter constituting 
a trade i^ark under color of a label registration. If the demands 
of applicants in those cases had been acceded to the certificate 
of registration would have set forth the ornamentation as part of 
the label. 

But in the present instance the ornamentation is dis- 
claimed, cannot ap-^ear in our certificate of registration. and no 
protection thereto is asKed or can be granted. I see no harm 
therefore in allowing it to stand in the specification as it is 
short, although it might be regarded as surplusage. 

The decision of the Exmainer of Tra-ie Harks is reversed. 

As above remarlced the alleged objectionable matter may 
remain in the specification; but the spc cif icaLlon in label cases 
are not printed. In lieu thereof a certificate is given in which 



I 



:0 



J. BuGhaii, Jr., Sh«et -2- 
Is reoitcd that tho "oopy of said label" is thereto attaohed. It 
follows then that the fp.o simile attached to the certi/'icate 
should contain only such matters as constitute the actual and pre- 
cise label. The applicant therefore iz required to furnish a 
fac slfiilo to attach to the certificate which \Yill embrace alone 
the precise registered matoer. 



t 



!0 



n 



1 






A L L k 1 £. A 1 1 o_^ 

of 
C.HARLES KIiO.X, 

Deoldod Oct. 12, 1077 . 

KecordQd Vol. 18, Pap:e 90 . 

oOo 

SPEAR, colciigsiciier: 

The essential feature of the trade mark consists of the 
two birds. Substantially the specif icat ion states that the exact 
shape of the birds, or v/hether v/ith v/ings closed or displayed, is 
not naterlal*. 

If the applicant vj^ere confined to the precise species of 
birds, or the particular form of birds, then the trade mark might 
be infringed with impunity. Ordinary observers would not notice 
such small differences, and seeing birds on each side of a shield, 
as a trade mark, might easily mistake it for the trade mark of ap- 
plicant, although the birds v/ere eagles in one case and falcons in 

the other. 

What applicant stated in the specification, I understand 

to ainount to no more than this, and I do not thinly these statement 

objectionable. Por the conclusions of lav; which may be drawn from 
the specification I do not think the Office responsible. The state 
ment is that of the applicant. Provided it does not misrepresent 
the nark or describe it too broadly, or fail to describe it dis- 



1 



13 



9 



\ 



\ 



APPL1C.AT10.N 
Of 
TIIE RUBBER CUSHIOIIED AXLE COIvIPAIJY , 

Dcoidcd Cot. 12, 1077 . 



RecorcTocI Vol. 18, Par.o 89, 



-oOo- 



SPEAR , C OI.D.II SSI ONER : 

Ihe trade nark consists essentially of the uords "Cush- 
ioned Axle", and is applied to the axle or axle boxes sold by this 
Company. 

The cane is a marginal one, and such as Y/ould not maKe a 
good precedent in either direction, I incline, hoT/ever, to the 
opinion that it would be better to give applicai-ts the benefit of 
the doubt, and register the marlt. The \Yords are, to some extent, 
descriptive, that is to say, they are suggestive of the structure 
of the articles to which they are applied. They are, hoY/ever, 
not descriptive, as the word "iron" or "wooden" applied to describe 
an axleo If the words were used to convey an idea of the article 
to those who had not seen it, they would manifestly fail to give 
any adequate conception of that article. It cannot, therefore, 
be purely descriptive. 

It appoars that the applicants are the manufacturers of 



< ^) 



I 

i 



3' 



% 



X 



The RuDber Cushioned Axle Co., Sheet -2- 
this article. They desire to seleot the term which should be a 
name of the goods - brief, convenient and proper. In folloiTing 
this purpose they have selected the words quoted above. 

The registration of this trade mar!fc, and its enforcement 
would not, I thinly, restrict the public in the use of language 
necessary to describe such axles and hubs. For instance, it v/ould 
not prevent manufacturers frora calling their hubs, providing they 
were manufacturing such as this, hubs provided with elastic boxes, 
or hubs having springs to taXe up the drust of the axle. 

V/ith these views, and though regarding the case, as I 
have said, a marginal one, I am inclined to overr^J.le the Examiner, 



and direct the marK to be registered. 



f 



13 



B I 



I 



of 

THE SPRIITGFIELD COLLAR CO ., 
Decided Got. 12, 1877 . 



Record ed Vol . 10, Par.e 91 



-oOo- 



SPEAR, coii:.:i SSI CHER : 

Both the reasoning of the Exair.inor and the decision of 
the Court referred to by hiin are satisfactory to me, and I accord- 
ingly affirm the decision of the Exaininer, 







m 






A L Z k 1 2. A 1 L £lE 
of 

i. A M 1 S. _Ji. L 1 B B E Y, 
Decldod Pot. 13 , 1077, 

RcGo rded Vol. IG, Pap.e 91. 

oOo 

SPEAR, COLnilSSIOKER: 

I agree with the Examiner in his conolusiojis respecting 
this case. 

The subject -matter is not a trade inarR for collars, but 
a peculiar box In which collars are to be placed for sale. The 
Examiner's reasoning appears to me to be clear and conclusive, and 
suf -icient Y^rithout the judgment of the Court in the Springfield 
Collar Company. 

The decision of the Examiner, is, therefore, affirmed. 



\. 



13 



'^; 



d 



of 

HA VEMEYERS WELDER, 

Deolded Oct. nv, 1377 . 

Endorsed on Examiner's Brief . 

ooo 

DOOLITTLE, ACTING COiailSSIOlTER: 

I SGG no objection to using the first four figurf-s in 
this case as they are small, will not enoujnbor the record nor con- 
fuse the publio; but the last txjo, are in all these respects, ob- 
jectionable, and to this extent the decision of the Examiner is 

affirmed. 

' V 




rl 



M 



S 

i 






•m 







i 



r 



'^ 



,1; 

y 
I? 

w 



ft 



J > 



f^ 



^-4i,UA. 




APPL1C.AT1^N 
of 
1 H 0. M A S _E^ PARKER, 

Decided IIov. 15, 1877 . 

y» i ^^.^ Reoordod Vol. 10, Paf;e 127 , 



'^ ^*/ ■/ ' ' 000 /-i-^5^- y^ ^ 



DOOLITTLE, ACTIIIG COICIIGSIGNER: 

Applicant descrilbes his label as consisting of "the fig- 
"ure of a boy" and the Y/ords "Scratch iriy bacl<:" surroimded by a bor- 
"der of parallel lines, as shown:- the figure and the v;ords being 
"formed of nuneroiis squares printed and arranged as represented, 
"This label is for ^.^se on cards or sheets of abrasive paper or 
"cloth, and as a pattern for sample worlc to X>e v/rought on the 
"squares, in order to so finish the label v/hen desirable. The 
"cards thus labeled are intended for use in firing friction matches.' 
I am informed that it is quite comiTion to v/orl: designs of 
precisely this character, upon the bach of abrasive paper or cloth 
but the question of novelty is not the one at issue, but rather 
that of identity. Is it a label, trade marh ^or design, or should 
It be copy-righted? 

As to the Simpson case 10 O.G. 333, one defonition given 
by Webster of a label, is about what the Office regards as beirg 



? 






H 



T.E. Parker, Ghoet -2~ 
the proper matter to be registered as suoii. "A narrov; slip of 
"sillc, paper, parchiaent, &.o,, af-Tixed to anything denoting its con- 
"tents, ownership and the lilie, as the label of a "bottle, or a 
"package." So far an this definition includes fanciful and arbi- 
trary matter which may be used for the sole and independent purpose 
of a trade mark, to denote origin or ownership, it is not appli- 
cable to matter rogisterod as labels. 

Both registrable labels or prints, and trade marks are 
recognized by the terms of the lav; and the decisions of the 
courts, as being applicable alone to some kind of merchandise. ^ 
Labels as giving the names of the manufacturers, place of manufac- 
ture, nature or quality of goods, directions for th :ir use and the 
like; and a traae mark as somvO arbitrary syiEbol to distinguish the 
same from those goods of a similar character made by other persons. 

The trade mark ststute requires applicants to sepcify 
"the class of merchandise and the particular class of goods com- 
prised in such class" to which the marjv has be^n or is intended to 
be appropriated. 

The section of the copy-right law relating to labels, 
provides - that no prints or labels to be used fC3P- "any other ar- 
ticle of mianufacturo" than pictorial illustrations of T/orks con- 



s 



i 



( * I 



^ 



T.E.ParlKier, Sheet -5- 
nectod with the fine arts shall be entered under the oopy-risht 
lav/ but may be registered in the Patent Office. 

And the penal Act of Ausust 14, 1876, erabracing within 
its teniis both trade marks and labels applies to the fraudulent 
affixing of them to goo-is, or paoXages containing the same. 

The Courts have always sustained trade marks and' labels 
on precisely the same principleis and they uniformly discuss these 
matters as having been affixed, in some Y/ay to goods, as merchan- 
dise, and not as constituting the merchandise itself. 

This Yras rem.arked by the learned Judge in the ca-re of 
Moorman vs. Hoge,2 Sawyer, 78 - in passing upon an alleged trade 
mark. He stated, that he had examined with care a large number of 
cases involving infringement of trade marks, including all the re- 
' cent cases which he had been able to find bearing upon the ques- 
tion, and that he had found no case in which the use of an article 
or package containing it had been enjoined unless there vras some 
symbol, word, letter or form impressed or af:?lxed to the article, 
and v/hich, Gonsider(;d separately from the article or package, v/as 
used as the trade mark. 



This viev," of the law as also approved by the U. S. Cir- 
cuit Court for the Southern District of Hew York, in the case of 



1 o 



^0 



T.E.Parker, Shoot -4- 
Harrinston vs. Libby 12 O.G. pace 188. 

In the present instanco then, the matter soiight to be 
registered is not a label, print or a trade mark affixed to goods 
or morohandise, to denote ownership or the charaotor of the goods 
and the like, but is the article itself - a fanciful pattern 
v^rought into or upon the article - forming part of the article and 
giving to it a certain value by way of a new api>earance, like a 
new pattern v/orked upon a slipper. 

Neither it is designed to be published as a work of fine 
art, and therefore it is not the subject of Gopy-right, 

V/e are nov/ led to consider whether the design act ap- 
plies to the case. 

The lavj relating to designs, provides for the granting 
of patents to those who amohg other things have invented and pro- 
duced "any new and original impression, ornament, pattern, print, 
or picture to be printed, painted, cast, or otherwise placed on or 
worked into any article of manufacture." 

The Supreme Court has held that the object of this Act 
was to extend the protection of a patent to the ingenious producer 
of new and original appearances given to manufactured articles 
whereby their salable value was enhanced a^id the demand for them 



enlarged 



^\j\Xo 







JIgfiKt 



f4 



T.E.Parker, Sheet -5- 

They add, that this aiv:.earanoe may Tbe the result of the, 
peculiarity of configuration or of ornament alone, or of both con- 
;jointly. Gorhaii l-Ianufaeturinr. Co . vs. Y/liite, 14 T/all.jSll. ' 

In view then of the fact that the matter in question is 
ornamental in character and is to t-e incorporated into the struc- 
ture of the article, to be a permanent part thereof, I aia of opin- 
ion that it comes within the terms and meaning of tiie design act. 
(See case of THiyte, Com. Dec. 1871, page 304.) 

The subjects to be protected under the design, copyright 
label and trade mark acts are often so nearly the same in charac- 
ter, that it is difficult always to say/ to which class they be- 
long, especially in the absence of definitions in the statutes, 
but these provisions differ in aome respects so widely that the 
Executive Departments must give them sovne positive interpretation 
to ensure an orderly administration of public business. 

The decision of the Exaiiiiner of Tra-le Maries is affirmed. 



14 



V I 



« 



o 






APPLi^AT10.]£ 
of 
ELIA^ BLOC.K ^ C 0_, , 

Decidod Nov. 22, 1077 . 

Re cor del Vol. 10, P ap:e 14? . 

oOo 

SPEAR , C OLEil G S I ClIER : 

It appears from the rocord tiiat the applicants filed an 
application for registration of trade-inarlc, nhich registration vj-as 
rofused. They subsequently filed an amended application in which 
they submitted to what amounted to a new trade-mar!k, which appears 
to have been considered a lawful trade -maris: , and essentially dif- 
ferent from that filed in the oricinal application. They made 
application to have this considered as an amendment of the origi- 
nal application which rcq,uest was refused. The Coiruiiissioner then 
held that "the amondiicnt of a proposed trade-mark in a matter ma- 
"terial to its identity changes its character, and renders the 
"sworn statement required by section 4958 in-applicable. The ef- 
fect is to cteate a"new trade mark". This is manifestly the case, 
for the nev/ mark was considered a lawful trade-mark, Y/hereas the 
old was adi.aitted not to be such lawful trade-mark. The Commiss- 
ioner held substantially that being a nev; trade-mark, an applica- 



^ 




/ 



^ 



ijt 



JCfi 



E. Blool; £<: Co., Shuct -2- 
tion must be made for the rosistration of it, and a fee paid "in 
the saine manner and for the same purpose as the fee required for 
"patents" Section 493G. 

The manner and the purpose of the pa^i-icnt .of the fee re- 
quired for patents is v;ell understood. It is not in the nature 
of a tax levied upon inventors, but is for the purpose of defray- 
ing the expenses of the examination. The fees in such cases are 
never ref^anded on account of any lacX of patentability in the sub- 
ject-matter of the application. A fee paid upon the filing of an 
application for a patent can be returned only when it is found that 
there ?;as no requirement of lavj for such fee, as if the applicant 
had already paid the fee, or should pay in excess of what is re- 
quired by la'.7. The practice of the Office is distinctly stated 
in Rule 111: 

"Money paid by actual mistake, such as a payment in ex- 
"cess, or v/hen not required by law, will be refunded, but a mere 
"change of purpose after the payment of money, as when a party de- 
"siring to withdraT7 his application for a patent or for the reg- 
"Istration of a traie mark, will not entitle a party to demand 
"such return," 



Fees in trade miarlv cases being paid in the same manner 



14 



14 



l^Jt 



E. Bloclv ^v: Co., Sheet -3= 
and for the Goine purpose as the foe req:iired for patents, it fol- 
lov/s that they should be refunded only under the sraue circuiTiGtanc- 
es. The fact that the Office rof^ascs registration, or that ap- 
plicant chances his purpose, and does not desire recistration of 



",hB marR for which he raade application or desires the registration 



of another marX is not enough to justify the Office under the law 
in returning a fee. Permission to aiacnd the application so as to 
introduce into it a nev; trade maris, is of precisely the saine nature 

I conc^lr in the opinion of ny predecessor, expressed in 
this case T;hen it was before him on a former occasion, that such 
a practice r/ould not be in strict accordance with. the lav;, and 
would lead to conf-asion in the transaction' of business. The amend 
ment upon an application for trade mark, by the substitution of a 
new and lav/ful trade mark for that which was found not to be a 
lawful trade mark in the original application would ajriount, as I 
^ave said, to a return of the fee- 

The question which applicants bring before me at this 
time is essentially the seme question which they brought before 



the Commissioner on the fon-ner ap'.eal. He refused to a Hoy/ a ncv; 



trade mark to be in;jected into the old application. Applicants 



filed a nev; application, and now they ask that ^he fee paid upon 



t^* 



I 



I 



J.'-i- 



E. BlooX & Co., Shoet -4- 
the filing of the old application shall be refunded. It would 
have been precisely the sanio if they had asked to have it trans- 
ferred to the ne\T applioation, and that was precisely the same in 
substance as asking that the new application night be injected 
into the old» 

* I aiTi, therefore, of opinion that there is no lav^ for re- 

turnins such fees in trade inarh oases. That the labor of exam- 
ining such application and deterinining that the mark which it pre- 
sents is not a la\7ful trade marife: is comparatively small, and that 
the fee is dispqropoytionate to the labor involved in the examina- 
tion is another matter. That cojiiplaint is against the law which 
prescribes the amount of the fee, and v/ith that I have nothing to 
do. It is my dutj"" to require the fees v;hen applications are made, 
and to pay such moneys into the Treasury. I have no authority to 
return them. 



The reqiiest of applicants is denied. 



l":^ 



16 



APPLi£A210.Ii 
Of 

MO.ET 4 C.nAlTD^T£, 
Decided llov. 27, 1877. 

Recorded Vol> 10 , Pa/^e 140 . 

oOo 

DOCLITTLE, ACTING COmil SSI CHER: 

The appella?it is correct in his statement that the 
Courts in nuiTierous decisions formerly recognized ho difference "be- 
tv/een labels and trade marks. They were used as syno^nyiaous tenns c/"" 
But he is pleased to ignore the distinction established by the Act 
of June 18, 1074 as amendment to the copy/right act. Previous to 
that tine prints and labels irhich the Courts recognized as trade 
marlcs were copyrighted with the Librarian of Congress, or at a 
still earlier period 03^ the U. S. District Courts, or vmere they 
were not thus recorded tiieir ovmers sought protection for them on 
general equity principles based on long and uninterupted usage. 
But the ainendiuent of the copy-right law, alluded to, distinctly 
states, that prints and labels used on articles of manufacture 
other than those connected with the fine arts, and v/hich are "not 
trade narles", shall be registered at the Patent Office - the reg- 
istrant paying the fee of Os. to cover a certified copy of the 



■6 



m 



4 



^ ^':'.. I 



Mo it <S; Chandon, Sheet 



-2- 



reoord thereof. 



It should be apparent to those havinc ooGnizanoo of this 
act, that it requires this Office to maKe some distinction be- 
tween labels and trade ir.arks; otherwise the fancy of the Office 
might lead it to charge 025. one day for the rcg istration of a la- 
bel; and 06. the next day for the registration of a trade marh, if 
as appellant noT7 contends, there is no distinction recognized by 
the lav/ between the sane.. 

Of the present alleged trade raarl: the Examiner states, 
that the star and firm name, have been the subject of independent 
registration. The additional descriptive piirase "Sillcry LIoussoux 
Superieur", is now sought to' be protected by regarding the -nvhole 
matter as an entirety. But the applicant is unfortunate in re- 
citing The Ainoskeag Co. case, (Cox's Trade Hark Case page S7 ) as 
an illustration ox a combined label and trade-mark sustained as an 
entirety. The only matter in that case which could be regarded as 
at all fanciful, were the letters, "A. C. A. ", which were found to 
stand for Amoslceag Co. and A., quality, or best quality. These 
letters 'the Court refused to continue within the injunction, stat- 
ing that they had acquired a settled meaning in the trade which 
other companies would have the same right to use as the plaintiffs 



IS 



Moit &: Charidon, Shcu-^ -5- 

Following the doctrine in that case, the; descriptive 
phrase of the ap'clicant, above alluded to, .must be refused regis- 
tration as part of a trade inarlv, and then there remains nothing 
but matter v/hioh has been previously rngistered. 

It may be added that the same matter which constitutes 
the trade mark in the Amoskeag Co. case, if now sought to be regis- 
tered as such would be refused registration as a trade mark, but 
might be registered as a label, and this too without conflicting 
in the slightest degree with the doctrine of trade marlvs, as set 
fortli by the Court and the equitable rights of uwners thereof; 
although observing a distinction betv/'.^en a label and a trade marR 
which the Court did not then make, because the law has since es- 
tablished it. ■ 

The decision of the Examiner is af -firmed. 



i 



s 



140 




W 



y 



_ A £ Z ii 1 ^ A 1 1 0. 1 _ 
of 

EMPIRE M1LL_C0.., 
Decided Doc. 8, 1877 . 

Re corded Vol, 18, Pap.e 155 . 

©9e 

DOOLITTLE, ACTIITG COILII SSI OTTER: 

The trade LiarK sought, to be registered, consiGts of the 
words "Fancy Snow White", applied to barrels containing flour, 
made under V7hat is called "the new process", by the above named 
firm of St. Louis, Mo. Their entire marls:, including the unessen- 
tial as well as the essential features, consists as follows:- "196 
Fancy Snow White New Process St. Louis, IIo." 

The most objectionable parts of the matter are the 
words "Snow V/hite". TTow it is well Imov/n v/ith this new process, 
that flour is made very white, or at least this is the natural 
supposition. The words mentioned are a com; -.on expression denot- 
ing, when applied to an article, that it is very white. 

There are diferent designations of white, such as pearl 
whit9,^cc. I fail to see how the word"fancy" affects the objection, 
the word "fancy" standing alone, ir previously unapplied Lo flour, 
might be considered an arbitrary nark, but it does not add to, or 



1 



14! 



j« 



V 



50 



Empire Mill Co., Sheet -2- 
detract from the force of the term "snov/ v/hite". Aiiybodj'- making 
a very white flour has the ooiniiion right to use words to express 
that quality, and if this coiroTion right is exeroised it \70uld be 
improper to give to the applicant cxolusive control of the phrase 

in quc?-tion. Persons using the words "snov; white" in the same 

o 
connection as used by applicant, and who should niiit the word "fan- 
cy", night nevertheless lead other persons to believe that it v/as 
the sane process and the sarae manufacture. If, as before remark- 
ed, there is an;/ peculir virtue added to this proposed ti'ade marl: 
by tlie use of the word "fancy", tlic application should be confined 
to that word, and if not previously applied to flour I. think it 



might be registered. 



The decision of the Exarainer is affirmed. 



ou 







151 




I 



If 



of 

^ E A R k I. §. 11 A k k I. k X} 

Decided Dec. 21, 1077 « 



Re 00 1" clod Vol> 18, Pa^e 173 , 



■oOo- 



DOOLITTLE, ACTIlia COIvD.IIGSIOIIER: 



/HaAyfC 



A"Dr)lioant ' s definition of a trade. nay be correct ab- 
stractly, but "anything which distinguishes one thing from another 
"and which can be so nearly imitated as to deceive the public" com- 
prehends a more extensive class of matters and things than the la?/ 
has in view in referring to trade marlis. 

The trade marks Yfnieh the statute contemplates may be 
registered are mentioned in Section 49S7 Revised Statutes as marKs 
appropriated to a "class of merchandise", or "a particular descrip- 
tion of goods comprised in such class". A trade marlv is what its 
name indicates - a mark used in trade, and its piirposo is to de- 



note the origin or ownership of the articles of trade to which it 
Is attached. 

The remedies provided under this statute for the fraud- 
ulent using of a trade mark, the penalties imposed, etc., have ex- 
press reference to marks distinguishing goods and merchandise. 



*»• 



. \ 



ir. 






I 



LOf ^ 



\ 



■^ *. 



C. HcEvoy, Ghoet -2- 
Perhaps a court of oquity micht afford relief to Ilr. Mac JCvoy of 
the "Hibernicon" exhibition asainst Ilr. Mac Evoy of the "Hiberni- 
ca" exhibition, on the ground of fraud in the misappropriation of 
a si£rn, advertisement, bill-head, or fanciful name of an exhibi- 
tion, but this is a different matter than the infringement of a 
trade mar!k: afi'ixcd to articles of trade. 



The decision of the Examiner is affirmed. 



>; 



li 



t 



of 

C.HARiiES. Z-IATE S,_ 

Decided Dgg. C4, 1077 . 

Endor sed on Examiner's Bri ef, 

oOo 

DOOLITTLE, ACTIIIG C0LI2JISSI QIHCR: 

What are called Ilineral Soaps are well }mo"5m, coirrposcd 
partly of raineral or eartliy substances for cleaning metallio ware 
etc., and very convenient for kitchen purposes. 

In this case then, the words "Kitchen Mineral" are eith- 
er discriptivo or deceptive. LangLiage descriptive of the quali- 
ties or use of an article, any one has a right to use, and no one 
can appropriate the same as a trade marl\.. 

Neither has any one the right to use deceptive language, 
Y^hich under the guise of a trade mark might mislead the public as 
to the nature and quality of the goods to which it is appropriated 

The decision of the Examiner of Trade Llarks is affirmed. 



-i.' 



ir>. 



\ 



APPL1C.AT10N 
of 

ST. LOUiS_BEEF C A ;K ^ 1 ^ Q C.O. 

Deolded Jan. 7, 18V8 . 

Recorded Vol, 18, Fa^e 185 . 

ooo 

DOOLITTLE, ACTIITG COLCn SSI ONER: 

In those cases where it has been held that the sjnnbols 
are object ionable on the ground that they are descriptive, the 
same were synonymous with the word for which they stood, and were 
intended to stand in place thereof. Thus, the figure of a fish ap- 
plied to fish lines vfas "gust as appropriate as the word fish. 
So might the figure of a tomato, or an ear of com upon canned 
tomatoes or canned corn. But here the essential feature of the 
marli being the f igure_of _ an o^^ applicable to canned meats of all 
descriptions, cannot be regarded as entirely descriptive. As to 
all other meats except beef, it certainly would not indicate qual- 
ity; and as to canned beef itself the name of the animal represent 
ed by the figure would not be the commercial name of the article 
to which the symbol is attached. The consideration of the matter 
in this lught gives rise at least to a doubt, which, I thinli should 

be given in favor of the applicant. 

The decision of the Examiner of Trade Marlts is reversed. 



15, 



APPL1C.ATI.0.N: 
of 
T. RO.BERT JEHKI.NS. & ^O.N 

Decided Jan. 29, 1878. 



Endorsed on Exatiiner's Brief. 



-OOO" 



DOOLITTLE, ACTING COiCMISSIOKER: 

The applioatiotr fails entirely to answer the objections 
urged by the Examiner of Trade Marks, The mark if registered in 
its present form would fail to denote its origin or ownership, and 
this is a sufficient objection without considering some others 
that the Examiner. has urged with great propriety. 

The decision is therefore afrimied. 



1. 



ir 



\J 



APPL1^ATI.0.W 
of 
K 1 k kRR £• RCiGER^, 

Deolded Feb, Q, 1878 « 

Recorded Vol> 10 « Pap:e 208. 

oOo 

SPEAR, COI£.iISSIOIIER: 

This case comes up on motion for rehearing an petition 
of the applicant. The wordf sought to be registered as a trade 
marX are "Rogers' Consumption Cure and Cough Lozenge", applied to 
a medical compound sold in the form of a lozenge. Registration 
was refused by. the Examiner on the ground that the words were 
purely descriptive of the compound and used in their ordinary sig- 
nification. 

If the words are used in their comanon signification, un- 
questionably the law does not admit the appropriation of them to 
be made by any person, for the reason that on account of their 
general or comQon use, every indivisual in the comniunity has an 
equal right to them. That the words are used in their common 
significance appears plain 6n inspection. They are not arbitrari- 
ly chosen, but appear to be intended to describe the quality of the 
article, and to convey to the mind of the purchaser the nature of 



57 



t 

4 



> 



I 



1 




M.J.Rogers, Sheet -2- 
the medioine, and the use for whioh it is intended. This being 
so, any person, on the principle laid down, would have the right 
to use the words, if he desired to raaXe and sell an article of 
that Icind. 



IT* 



There are many cases in which similar phrases have not 



"been protected; "Wolf's Aromatic Schiedam Schnapps", 1859, N.Y. 
Sup. S.T., Wolfe V. Goulard; 1873, Sup. Ct., Cal., Burke v. Cass in 

I "Extract of Night Blooming. Cereus"; 1864, Com. Pleas, Philadel- 

1 
phia. Pa., Phalon v. Wright,? "Perro-Phosphorated Elixir of Cal- 

isaya Bark". 1867, IT.Y. Com. Pleas; 1874, N.Y. Ct. of Appeals, 

I 
Caswell V. Davis./ 

I 
Ayre's Cherry Pectoral" (medicine for coughs, colds <5:c« ) 

1877, N.Y. Com. Pleas, <^,T. Ayer v. Rushton. 

"Old London Dock Gin" 1865, N.Y. Com. Pleas, S.T., Bin- 
ninger v. Wattles. 

Upon careful review of the case therefore, I find no 



good ground for setting aside the former decision. 



Jjj 



5 



1 1 



i 



«-> , / 



APPLI.C.AT.I.O.N 
Of 
MOj:? & ^HANDON, 

Decided March 12. 1878 . 

Reco r ded Vol. 10, Fapie 250. 

oOo 

SPEAR, COirJIGSIOlIER: ju. , 

The ap"olicants, \fine manufacturers, domiciled in the Re- 

h 

public of Prance, desire to register as a trade marX for a certain 
quality of champagne wine, "ah allocation composed of the words 
and letters Sillery, Mouseux, Superieur above a representation of 
a five pointed star followed by the words Moet & Chandon, Epem^^ 
in two horizontal lines." I understand that the entire allocation 
excepting the first words "Sillery, Mouseux Superieur" has alreac^ 
been registered as a trade marX to the applicants, so that it re- 
mains for me to consider whether these words of themselves are 
sufficiently distinctive to constitute a lawful trade mark under 
the statute. The applicants are citizens of France, and as such, 
by virtue of the trade-mark treaty with that country, and under 
section 4937 of the Revised Statutes, are privileged to register 
the distinctive marks used by them in the trade to designate their 
particular brands of goods. But before regis Iteration can be per- 



liJi) 



f 



Mo it & Chan don. Sheet -2- 
fected in this country, the Commissioner of Patents must be F.atis- 
fied, amongst other things, that the proposed device or symbol is 
of such character as entitles it to protection. He "shall not re- 
ceive and record any. proposed trade mar^ which is not and cannot 
become a lawful trade mark." In this connection it is well to 
state that by a "lawful trade mark," Congress meant such only as 
comes within the judicial sanction of the legal tribunals of the 
United States competent to deal with the subject. That the mark 
is a lawful one under the laws of the country where it originated 
is not test of its registrability in the United States, The trea- 
ty with France touching trade marks creates no exception to this 
well recognized principle of law, (Story Conflict of Laws, Sec. 
32, et seg,^,) nor does the statute on which the privilege of reg- 
istration is based. If, then, the mark which applicants present 
is not a lawful one according to the principles laid down by the 
courts of this country, it cannot be registered. 

Returning now to the words which are submitted for regis- 
t rat ion, we find that "Sillery" is the usual generic term expres- 
sive of a certain quality of champagne wine, and that "Ilouseux, 
Superieur" are descriptive ad:jectives likewise indicative of grade 
or quality. Yet these terms taken together are the ones v/hich 




lOJ 



\ 



Mo it & Chan don. Sheet -3- 
would naturally and necessarily be employed in defining the char- 
acteristics of the wine. They do not differ in this respect from 
the A.C.A. narX passed upon in the Amosl^eaK Ivlanufaoturint^ Co , vs. 
Spear . Cox's American Trade Mark Cases, p. 87, wherein the Judge 
says, "As the plaintiffs could not have acquired by their prior 
"occu.pation, an exclusive right in the use of the words 'First 
"Quality' or 'Superfine', they cannot have acquired a right "by 
"similar means to an exclusive use of any letters, rnarlvs, or other 
"signs, v/hich are merely a substitute for the words, and intended 
"to convey the same meaning. 

« It is immaterial whether words, or letters, or figures, 
"or any other signs are used, if the single fact, which they are 
"used to indicate -or declare, is a truth that other manufacturers 
"or dealers have an equal right to express and comiTitmicate." 

Since then it was held in this leading case upon the 
subject that this portion of the mark in controversy could not 
lawfully be appropriated by any individual manufacturer, so too, 
in the present application, where the words are so clearly and 
truly descriptive of grade and quality, I fail to find in them le- 
gitimate subject-matter for a registrable trade-mark. Whether the 
applicants have or have not any standing under the amendatory 



^ 



m 



i 



\ 



m 



Mo it & Chan don. Sheet -4- 
copyright act of June, 1874, it is not necessary to discuss. Cer- 
tainly they have made out no case under the trade-inarX statute, 
failing which, registration of the proposed mark must be denied. 



The decision of the Examiner is affirmed. 



\ 



,'i 



\ 




A P P L 


I C A T I N 




of 


A R T H 


U R WARD, 


Decided 


March 22,1878. 



o 



Endorsed on Examiner's Brief. 



-oOo- 



DOOLITTLE, ACTING COIUdlSSIOlIER: 

The affidavits in this case do not have the effect of 
showing that the alleged trade-mark was a lawful one riglitfully in 
use prior to the act of 1870. They, on the other hand, show that 
the name of the place of manufacture was used on the goods there 
made a right exercised no doubt by others in the same place en- 
gaged in the same business, or ivhich might have been then, and may 
now be so used. 

?rnat circiamstanoes could have constituted a lawful trade 
marX prior to the act of 1870, must be gathered from the decisions 
of the courts, and the doctrine established in the matter of an 
appropriation of a name of a town as a trade maris: to be applied to 
goods made in that town is thus stated by the U.S. Sup. Court 13 
Y/all, 311: "No one can apply the name of a district of country to 
a well Renown article of commerce, and obtain thereby such an ex- 
clusive right to the application as to prevent others inhabiting 



iii 



'iH 



41 



'd 



Arthur Ward, Sheet -2- 
the district or dealing in similar articles coming from the dis- 



trict from truthfully using the same designation. 

The decision of the Examiner of Trade Maries is affirmed. 



\ 



I 



I 



^^jUd^-^ 



AP.PL1^ATI.0.K 
of 
ZiTZPATRlC.K, DAVIS & C.O.., 

Decided March 25, 18 70 > 

Reoordod Vol> 18, Page 278 , 

oOo 

DOOLITTLE, ACTING COIEIISSIOIIER: 

In the first place I fail to see, how that part of the 
specification in which applicants state that they have used their 
trade marls, for one and one-fourth years last past on canned sal- 
mon is inconsistent with the former part of the specification, 
where they state they have adopted for their use the trade marK 
for canned floods and pacKed and preserved goods, such as fish, 
meat, fruit and vegetables. 

It simply amounts to this: They have used the trade mark 
on canned salmon, for the time mentioned. They now propose to ex- 
tend its use to other canned goods. As to applying the trade mark 
to canned goods generally, it was thought originally that this was 
too broad an application, "but upon further consideration, and in 
view of the previous practice of the Office, canned goods may be 
considered as a sisgle class of merchandise, as it so appears to 
be regarded in the trade. The Commissioner concurs in this view 



1 



m.\ji 




■f 



Pitzpatrick, Davis cc Co., Sheet -2- 
of the matter. 

As to the requirements of the Examiner, that the present 
mounted fao simile "be rejsigned by the witnesses, his attention is 
called to the fact, that ty my order of Feb. 5th, 1078, a certi- 
fied copy of the original application was allowed as the basis of 
the present application. This included of course the fac simile 
with witnesses names thereon. A certified copy of such fac simile 
can therefore now be used. As to the other informalities and ir- 
regularities in the caption referred to by the Examiner, he has 
not specified them, and I do not know what they are. 



Ji. V 



vy 



A P P L i C. A X i ^ N 
of 
H. BECKER & C2', 

Decided April 4,1878. 



Recorded Vol. 18, Pap:e 296 > 






SPEAR, coi^n SSI oner: 



Applicants seiels: to register the word symbol "Brandywino 
Mills", as a trade marlL for flour, and have "been rejected by the 
Examiner on certificate of registration, #784, granted A, Nones & 
Co., April 23, 1872, in which the word "Brandywine" occurs, as an 
essential portion of a trade marK distinctive of the same class of 



goods, 



The Examiner talces the position that the word "Brandy- 



k 



wine*' is the characteristic one of the mark already registered, 
and that the Y;ord "mills" with which it is associated v;ith by the 
applicants does not suifficiently discriminate the marks, and that 
as a consequence the resemblance is such as will "be likely to de- 
ceive the public" in purchasing flour in the market. 

Applicants not only deny that the word "Brandywine" is 
in anywise the distinctive or characteristic one of the mark al- 
ready registered, but also contend, that, even if it is, the alio- 



i 



vv 




H, Becker & Co., Sheet -2- 
cation Brandywine Mills is so far different as to be entitled to a 
separate registration. 

Without entering upon a discussion of these points, it 
occurs to me, that the subject may be disposed of upon an entirely 
diffej'Ent ground. 

At Wilmington in the State of Delaware, there is a group 
of flour mills situated on the valley of the Brandywine, which 
have been actively en-gaged in the manufacture of flour, for the 
general trade, since early in the century. They are properly and 
accurately described as the Brandywine Mills, and are well !fcnown 
to the community under that name. The flour which they make would 
be strictly speaking, Brandywine Mills flour, and the right of the 
manufacturers to so distinguish it in the trade, canriot be seri- 
ously questioned. 

The effort of the applicants to secure the registration 
of these words as a mark for their flour, if it does not result in 
a deception to the public, and thus within the objection in Nevnnan 
vs. Alvord, 49 Barb. 500, is certainly within the language of 
Amoskeag Manufacturing Co., vs. Spear, 2nd Sand. S. C, 599. "The 
owner of an original trade mark x x x has no right to appropriate 
a sign or symbol which from the nature of the fact which it is 






J.U 



H. BecXer & Co., Shoet -S- 
used to sigr.ify others may employ with equal truth, and therefore 
have an equal right to employ for the same purpose." 

To the same effect are the cases of Broolsilyn White Lead 
Co.L vs. Masury, 25 Barb. 417; and Canal Co., vs. ClarX, 13 Wall. 



311. 



Since the mark is not such a one as points to individual 



origin or ownership in the manner contemplated by law, registra- 



tion must be refused, and the action of the Examiner is affirmed, 



u 



.4 



^^ 



*1' 




p^(yy 




A Z Z i 1 C. A 1 i. 0. il 
of 

JAME^EPP^&^O.., 
Decided April 10, 1878 . 

Endorsed on Examiner's Brief . 

oOo 

DOOLITTLE, ACT DIG COLEilSSIOKER: 

I think Applicant may have his trade mark registered as 
applied to the class of "Manufactured Cocoa", "but he cannot be al- 
lowed to include within that class to which his trade mark is to 
"be applied "Manufactured hair oil" of which cocoa is but probably 
but a single ingredient, and I do not understand that he has at- 
tempted yet to do this. He recites as a matter of fact on what 
particular description of goods he has previously used this marK, 
but does not state in the language of the Statute "the particular 
description by Y/hicli the trade-mark is intended to be appropriated 
It appears frpm the specification originally filed that he has not 
only used this trade mark on hair oil, but on many more articles 
perhaps equally foreign to the general class. 

If Applicant intends to hereafter use his trade mark on 
particular descriptions of goods alone comprised in the general 
class of manufactured cocoa, he should state that intention and 



-i\J 



) 



JL ■ 



J. Epps & Co., Siioet -2- 
speclfy the goods, wliioh should not be inconsistent with the gen- 
eral class. But if it is his intention to hereafter apply the 
trade nark to the whole class, it is not necessary ho should spec- 
ify any particular goods comprised in such class, the Statute, in 
my opinion, not requiring such special enumeration where the use 



of the r^ark is not to be accordingly limited. 



\^ 




APPL1C.AT10.N; 
of 

EMO.RY E. BARNUM, 



i 



Deoided April 10, 1878 . 

Recorded Vol. 18, Pap:e 504 . 

oOo 

SPEAR, COMvilSSIOTIER: 

The Examiner held that the words isrhlch constitute the 
alleged trade mar^ were purely descriptive. While they have that 
appearance, I think in fact that they are not, but are arbitrarily 
chosen. They do not convey any definite idea to the mind, and ap- 
pear to b© mainly a fanciful alliteration. I am of th© opinion, 
therefore, that the narK be registered. 



~!k_ O 



A LL k 1 2. A 11 2.E 
of 

BEC.KMAN, NO.BLE & C.O.., 
Deolded April 11. 1878 . 

Recorded Vol. 18. Page 504, 

oOo 

DOOLITTLE, ACTING COLCil SSI ONER: 

Section 4939 prohibits the Coimnissioner of Patents from 
receiving a trade-mark for registration which has been already reg- 
istered, or received for registration, or whioh so nearly resem- 
bles such last mentioned trade mark as to deceive the public. 

The word "Puffer" which applicant wishes registered has 
been rejected upon the word "Puff" already registered and appliod 
to cigars. It is a metter of judgment, but in viev; of the vast 
field from which arbitrary trade marks can be selected only limit- 
ed by the powers of the imagination, it seems rather strange that 
this word should be selected, differing only from the previous reg- 
istered word by the addition of a final sylable might be easily 

lost sight of by the public. 

I am of opinion, after due consideration that the word 

which is noTs- attempted to be registered does so clearly resemble 
the word previously registered and applied to the same article 
that it is quite likely to deceive the public, and therefore the 
decision of the Examiner of Trade Llarks is affirmed. 




^ 



I 





APPL1C.AT1^N 
of 

£' ]1 E E R 1 JllYER, 
Decided April 10, 1870 . 

Endorsed on Examiner's Brief . 

oOo 

SPEAR, COLCnSSIOlIER: 

It is admitted "by the Examiner, that the specification 
conforms to the requirements of the Statute. This being the case 
it is not necessary that they agree strictly with the form given 
in the rules. These forms are for the convenience of the public 
and are not binding. Conformity to the Statute is sufficient. 
The specifications may be admitted. 



fjM^ 



of 
^. JAC.O.BY_& ^0.., 

Decided May 9. 1078. 



Recorded Vol. 18, Pap:e 528 . 



■oOo- 



DOOLITTLE, ACTING COI-'CIISSICNER: 

The applicant in his argument on appeal fails to remove 
the objection urged by the Examiner, that tv/o upright strips a, a. 
applied to each end of the box containing the cigars forms an in- 
tegral part of the structure and is therefore not proper subject 
of a trade mari:. 

It malces no difference that cigar boxes hitherto have 
been constructed without these strips, or are complete for the pur- 
pose of holding cigars without them. The fact remains that after 
being applied they form just as much a part of the box as any oth- 
er part of it, and are just as proper matter for a trade mark, and 
no more so, as the lid of the box, its bottom or sides, or the 
taclts that hold the parts together. 

BeiPxg thus to all appearances simply a part of a box it 
does not posses the sole and independent office of a trade mark. 



As set forth in the ease of Gillott vs. EsterbrooX, 



B. Jacoby & Co., Sheet -2- 
47 Barb. 457^ a peculiar form of bOx indicates wcrl^nanship, and is 
more the trade mark of the manufacturer of the box than of the 
trader who puts his goods therein. 

That mechanical devices and structural characteristic of 
packages are not the proper subjects of a trade mark is a doctrine 
established by the cases of Gillott vs. Esterbrook, ante , Moorman 
vs. Hoge, 2 Sawyer 78, and Jacob Gordon 12 O.G. 517. 

The central line b extending across the top and front 
of the box has no necessary connection with the strips, and the 
above remarks do not apply thereto. 

The decision of the Examiner is affirmed. 



^X^z^^.^'-*^ 



AZPL1C.AT10N 
of 
GEO.RGE 1MER10.N, 

Decided May 11, 1878. 

Recorded Vol, 18, Va^e 556 . 

e0e 

SPEAR, coi^iissioner: 

The Examiner holds thatthe word "Pel lepo charm" must be 
registered, if at all, as a trade mark, and not as a label. An 
attempt has been made on the part of the applicant to show the 
word is not, as afnatter of fact, a fanciful one, but in the true 
sense descriptive of the characteristics of the article ?/hich it 
is designed to distinguish in the trade. With no disposition to 
question the accuracy of his GreeX, I am none the less satisfied 
that the word is strictly fanciful in its present application, and 
as such cannot be registered in a label under authority of the Sim- 
pson case recorded in 10 O.G.3?3 

ThG action of the Examiner in refusing to register the 
word as a portion of applicant's label is affirmed. 



6 



-«„ ■« 









APPLlC,Ali.£]i 
Of 

JAME^ ^. KER R,__ 

Decided July 11,1878 . 

Recorded Vol. 18, PaF:e 427. 

oOo 

DOOLITTLE, ACTING COmflSSIOIIER: 

The applicant desires to register the words "System Reno- 
vator", as a distinctive marX for a certain medical compound, pre- 
pared "by himself, and which it appears from the examination of 
the label containing the above mentioned distinguishing words, is 
intended to regulate *'all disorders of the system, purifying the 
blood, removing skin diseases, strengthening weal^ lungs, &c." The 
objection to these words as a mariL, lies in the fact, that they 
are not sufficiently arbitraiy, or distinctive, to point out in- 
dividual origin or ownership, in the sensu contemplated by the 
Statute. They come within the language of the Court in Canal CO o 
vs. Clark. 15 V/all. 323, that "a generic name or a name merely de- 
"scriptivo of an article of trade, its qualities, ingredients, or 
■characteristics cannot be employed as a trade mark", and of Judge 
Duer, in Amoslvcag Manufacturing Co. -gs. Spear. 2 Sand. S.C. 599, 
wherein speaking of the trade mark claimant, he says, "he has no 



6 O 



J. C. Kerr, Sheet -2- 
"right to appropriate a sign, or a symlDOl, which from the nature 
"of the fact it is used to signify others may employ with equal 
"truth and therefore have an equal right to employ for the same 
"purpose. " 

Medical preparations designed to cure or eradicate the 
same class of complaints enumerated by the applicant, are quite 
common to the trade, and I am clearly of the opinion, that the 
words which he presents for registration, would just as accurately 
and just as certainly describe the characteristics or qualities of' 
these other preparations as of his own. 

It would "be a hardship, therefore, upon manufacturers of 
these articles, and in derogation of their comiiion law rights, if 
the applicant were allowed the exclusive privilege of these de- 
scriptive words as a trade symbol for his preparation. 

Upon the authorities cited, the registration applied for 
must be denied, and the action of the Examiner in refusing to is- 
sue the oertifioate affirmed. 



9 (^ 



• c/ 



APPLI.C.AT.I.£N 
of 
DJLBBLE MANUFAC.TUR1NG C.^., 

Decided July 12,1878 . 

Recorded Vol> 18 « Page 428, 

oOo 

DOOLITTLE, ACTIITG G01£:iSSICm:]R: 

The applicant desires to register the word "Hemacite", 
as a mark for a certain indurated blodd compound, for which an ap- 
plication for letters patent is now pending before the Office, 
He also intended applying the same word to distinguish door knobs, 
panels, car trimnings, and various articles of ornament, when pre- 
pared from the above mentioned indurated conrpound, by a particular 
process set forth in letters pateAt already secured by applicant. 

The Examiner insists that the applicant shall confine 
the use of the word in its office, as a distinctive mark either to 
the raw material itself, or to some one of the finished articles 
to be made from it, 

Prom this requirement of the Examiner, applicant brings 
the present appeal. So far as it is intended that the word shall 
protectively distir^guish the raw material before it is worked into 
form, as well as the finished articles into 7/hich it may be 







1 



Dibble Mfg. Co., Sheet -2- 
wrought, acoordlng to the process pursued, I am clearly of the 
opinion, that the action of the Examiner is correct, and that the 
crude material, after being subjected to tlie process treatment is 
so far different in its characteristics as to constitute an en- 
tirely different class of merchandise. Since the lav/ contemplates 
that only one class of merchandise shall be protected by a single 
registration, the applicant must elect which one of the tv70 class- 
es indicated shall be retained in the case. 

In event it is detennined to abandon the marK in connec- 
tion with the raw blood material, the further question presents 
Itself, whether the ruling of the Examiner, that the symbol shall 
be still further confined to some one of the various articles enu- 
merated in the specification is the correct one. Now the law re- 
quires that the applicant for a trade marX r(5gistration shall 
specify "the class of merchandise and the particular description 
"of goods comprised in such class by which the trade mark has been 
"or is intended to be appropriated." 

It is not difficult to conceive of cases wherein the on- 
ly satisfactory means of definitely and certainly specifying "the 
class of merchandise" it is proposed to protect, would be by a 
statement of the peculiar distinctive composition which enters 



>u 



1 



, '■I 



Dibble Mfg. Co., Sheet -5- 
into, or serves to characterize the class. Thus, in the case in 
heind whatever the form or article into v/hichthe composition is 
molded, the finished material is invariably the same, and is im- 
doubtedly possessed of just as marlced distingushing characteris- 
tics as are met with in factitious ivory, vulcanite or celluloid. 
Numberless articles can be made from these plastic compotinds, yet 
after all each is but one "particular description of goods", com- 
prised in a single "class of merchandise", the basis of the class 
in each case being the peculiar composition which is common to all 
the articles. 

I am satisfied under this view that the applicant will 
he entitled to cover in a single application all the finished ar- 
ticles, whatever their form or use, which are prepared from the 
particular composition. I see no objection to the retention of 
the references to the Ijatters patent and the application respect- 
ing the raw material and the process by which it is used, since 
they serve to more certainly point out precisely the class of mer- 
chandise the certificate is intended to protect. 

The case is remanded to the Examiner for his action, in 



view of the foregoing remarks. 



9 



of 

R^XBURY C.ARFET C.^MPANY, 
Decided July 15.1878 . 

Recorded Vol. 18, Pap.e 425. 

oOo 

DOOLITTLE, ACTING COLCIISSIONER: 

I see no reason for refusing to register the mark appliei 
for. It is a mistake to 'say, that it has no substantial limita- 
tion. That it is a line of color, running the length of the fab- 
ric, defines it very clearly to the mind, and both from the na- 
ture of the material it is designed to distinguish, and the manner 
of sale, it must be obvious that the particular way of applying 
the mark is the only o^e, that would certainly and fully identify 
the merchandise in the market. 

The essence of the mark lies in its contrasting color, 
V/hether, white, black, or gray, or anything else it matters not, 
so long as it is strikingly distinguishable from the bocSy of the 
fabric, the carpet backing with which it is inwoven, ^Vhen so dis- 
tinguishable, it quickly attracts the eye, and thus by association 
serves to indicate origin or ownership. 

The mark being of the character stated, I should be \m- 



z 



'/^ 



Roxbury Carpet Co.,Ghe,et -2- 
willing to confine the applicant to any one color in making it 
when it is so obvious that the real arbitrary character would thus 
escape adequate protection. Nor need there be any limitation as 
to the particular portion of the backing, i.e. at what part of its 
width it is to be applied. 

In so far as the objections appealed from are concerned 
the certificate may issue notwithstanding, and the action of the 
Examiner is accordingly reversed. 



^ 



•* 



^ 



^,Jt ^' 



mfM 



of 
PAP/ER ZABRl£lJEC.O., 

Deoldod July 18. 1878 . 

Recorded Vol> 18, Papie 477. 

oOo 

DOOLI'^TLE, ACTING COLEII SSI ONER: 

The applicant desires to register as a print, what is 
sho^n "by the fac similes accompanying the application papers to be 
a flower group enclosed in a floral border, "the whole forming the 
bacX of a playing card." 

The Examiner insists, that the subject-matter does not 
properly constitute a print, but should be registered as a trade- 
marlc, and from his ruling in this regard the present appeal is 
taken. 

It must be remembered that the real essence of a trade- 
mark lies in the fact that the distinguishing word symbol or other 
device, which constitutes it, serves by peculiar association to 
distinguish the individual origin or ownership of the goods to 
which it is applied. 

The sole and independent ptirpose of a trade-mark, as in- 
timated in Moorman vs. Hoge, 2 Sawyer, p. 87, is to indent ify the 



n 




Paper Fabrique Co., Sheet -2- 
merchandlse with which it is associated; and that if this limit is 
exceeded, if it is in fact an integral portion of the article, en- 
ters into its structure, in the course of manufacture, and increas^- 
es by its presence (because of iX& structural function it possess- 
es, ) the value of the article, then it can no longer be regarded 
as a mere arbitrary symbol chosen at the option of the manufactur- 
er, but one whose presence is actually necessary to the complete- 
ness and mar!k.etable quality of the goods. 

Moreover the mark must not only be of the arbitrary 
character indicated, but must be such a one as will be identified 
by the ordinary purchaser, associated by him with the special 
class of goods, and indicating: by its presence their individual 
origin. (IjIcLean vs. Fleming, 13 O.G. 913.) 

Thus defined, I am quite clear the case in hand does not 
present subject-matter for trade-mark registration. The print is 
a component part of the complete playing card, adding by its pres- 
ence to the ornamental appearance of the card, and from that veiy- 
fact increasing its market value. 

Moreover, whilst the ornamental figure might be suffi- 
ciently distinctive to the eye of a skilled designer, or to the 
wholesale dealer, accustomed to notice niceties in difference be- 



}yj 



Paper Fabrique Co., Sheet -5- 
tween the goods of various raanufacturers, I doubt very riiuch wheth- 
er to the eye of an ordinary purchaser, using ordinary diligence 
in the selection of the articles, the mark would appear in such 
distinctive way as to enable the purchaser to identify the goods 



by it. 



The action of the Examiner is consequently reversed. But 



can the subject-matter be registered as a print according to appli- 
cant's desire. If reference is made to Section 3 of the Ainenda- 
tory act of June 18, 1874, which was the Act giving this Office 
authority to issue certificates for certain kinds of prints and 
labels, it will be found that the language of the section roads, 
"and no prints or labels designed to be used for any other arti- 
"cles of manufacture, shall be entered under the copy-right law, 
"but may be registered in the Patent Office." 

From tiiis statement it is inferred, that such prints or 
labels as are designed to be used for other articles of manufac- 
ture, may be so entered in the Patent Office; and unless they are 
so designed, it rirust be quite clear, that they do not come v;ithin 
the privilege of the section. In any given case/ therefore, it be- 
comes necessary to inquire, \'fhev^ a party desires to secure the 



benefits of tliis Act, whether the particular print, or label, is 



■p 



^ 



Paper Fabrique Co., Sheet -4- 
designed to be used in oonnection with some other article of man- 
ufacture, and thus within the section or whether it is of and in 
itself an essential portion of the article, in no wise separable 
therefrom without diminishing the article's value. 

The print which is asked to register is an essential 
component of a finished playing card, is not properly separable, 
or disassociated therefrom, and cannot, in any reasonable sense be 
said to be "designed to be used for any other article of manufac- 
ture." Failing in this requirement it cannot be entered under the 
Amendatory act referred to. If, however, attention be directed to 
Section 4929 Revised Statutes relating to designs, and remembering 
that in Gorham Manufacturing Co., vs. Wliite/l4 V/all.) the court 
distinctly states the purpose of the design law to be to protect 
ornamental figures, prints, &c. I am quite sure that the appli- 
cation in question will be found to come within the provisions of 
this section, viz. "and new and original design for the printing 
"of woolen, sillc, cotton, or other fabrics; any new and original 
"impression, ornament, patent, (pattern, ) print, or picture to be 
■printed, painted, cast, or otherwise placed on or worked into any 
"article of manufacture." The ornamental design for the playing 

card back would seem to bear the same relation to the finished 
card, that the scrolls, floral and figured designs common to cali- 



o 



Paper Fabrlquc Co., Glieet -5- 
co printing, carpet weaving, etc., do to the market product upon 
which they are imprinted, or Into which they are woven. In the 
strict language of the section, the ornament or print is one which 
is to "be printed, paiijted, or otherwise placed on the article of 
manufacture; and since the sole end and purpose of the particular 
design is to give an ornamental finish to the card, I am quite 
clear it should "be protected, if at all under the design law. 

As the case stands upon appeal the decision of the Exam- 
iner is reversed. At the same time he is instructed to be guided 
in the further disposition of the case by the foregoing remarks. 



After a careful consideration of the v/ithin argument I 
still adhere to my formerly expressed opinion that the matter is 
the proper subject for a design patent, and is not a proper trade- 
mark, nor a print or label. Nor does it possess the two fold 
quality of a print and design, that is a print to be placed upoA 
other articles of manufacture, but it is part of the manufactured 
article itself. A part of each card just as much as the face of 
such card. If a patent for a design cannot be granted for this 
matter, it cannot receive protection at all from this Office. 

The motion to rehear is denied. 
Nov. 18, 1878. 



iflM 



1 






* 



4 



t 



<-'{ 



A LZ k L 2. A 1 1 0^ 
of 

Decided July 50,1878 « 

Recorded Vol> 18. Pa^^e 456. 

oOo 

SPEAR, coM^n SSI oner: 

The applicants desire to register the word "Ansatz", as 
a mark for a certain medical compound, prepared by them, and pop- 
ularly Icnown as bitters. 

The term, as originally presented, was "Bitterer Ansatz" 
but upon objections being made to the word"bitterer",as descrip- 
tive of quality, it was erased; a like objection is made to the 
remaining word "Ansatz" and the present appeal is taken from the 
action of the Examiner refusing to register it. 

It is a common law doctrine, that words descriptive of 
the quality, characteristics &c., of the goods they are used to 
designate cannot become lawful trade-marks. 

To allow an exclusive property in them would wrongfully 
fetter trade by preventing dealers in the same class of merchan- 
dise from employing those terms v;hich from their nature most ac- 
curately describe the articles vfith which they are associated. 



u 



I 



A. Weismann &: Son, Sheet -2- 
Seotion 4939 Revised Statutes, in 7:ermitting the regiotry of marks 
that had "been in use prior to 1870, expressly confinos its protec- 
tion to " lawful trade narl^s rightfully in use" at that time. 

If these words denoting quality, nature, &c., are pre- a 
sentod for registration, it is of no importance that they were in 
use before the passage of the act of 1870, for they are not "law-' 
ful" narlvs, and do not become so by virtue of the act in question. 

Under the title Ansatz/Deutsoh-Englisches V.'orterbuch Lu- 
cas, Bremen 18G8. Vol. 1, p. llBp occurs perhaps ojuongst twenty 
other meanings of the uord the foliov/ing "(Pharm. Ansatz.) Ingre- 
dients, compounds", of rrhich the singular would he, Ansatz Ingredi 
ent ^compound. 

It is idle to say, that because the word has so many 
different significations and uses, that it is in any sense employ- 
ed arbitrarily in the present instance. A cardinal rule of trans- 
lation ma5:es the context, the sense, govern the selection of the 
significant definition, so that in their English dress the words 
"Bitterer Ansatz" become Extra (comparative) Bitter Compound, which 
is sufficiently descriptive for all practical purposes. 

The registration of the word must be denied and the ac- 
tion of the Examiner affirmed. 



i 




■> 






t 



# 



A LL k 1 ^ A 1 L 2R 
of 

BO.j;RI.iiG:&A^C.lilBALD, 
Deolded Aug;. 17, 1870 . 

Recorded Vol. 18, Vslrb 492 . 
oOo 

SPEAR, comii SSI oner: 

The applioants desire to register the term "Electric 
Light" as a marl^ for refined petroleum. The substance of the Ex- 
aminer's objection to this registration may be found in his state- 
ment, "that no symbol or designation is a lawful trade marR, un- 
less it be truthful as well as not descriptive," truthful being 
used by him in the sense of opposed to deceptive. 

A trade mark is addressed to the intelligence of an or- 
dinary purchaser, buying with ordinary care. If any proposed marX 
is apt to deceive a person of this character, even though it may 
be a fanciful designation of the article to vvhich it is applied, 
it cannot be registered. 

The present case is on a par with "Rising Sun" Polish, 
and other exaggerated terms, conveying an idea of superior excel- 
lence, with a trace of untruth or inaccuracy in the association, 

and yet not deceiving anyone of ordinary intelligence. 

The symbol may be admittcd,and the Examiner's action is 
reversed. 



APPLiC.AT10.N 
of 
ZEIDK. HAN^C.H1LD1, 

Decided Avlf.. 27, 1878 . 

Endorsed on Examiner's Brief . 

oOo 

SPEAR, coicn SSI oner: 

That the word everlasting conveys the idea of superior 
durability in the particular connection proposed cannot be doubted 
But it does this not because of airy accurately descriptive use of 
the terra, for human productions are not "everlasting;", but because 
custom has assigned a certain significance to superlatives exagger 
ated expressions^ etCj when used in connection with articles of 
trade and gathers the impression of excellence notwithstanding the 
words are employed in a purely fanciful, strained and oftentimes 
incorrect sense. It is the former and not the latter use of the 
word which the la\7 refuses to protect. 

The Examiner is reversed and registration will be al- 
lowed. 



^\ 



% 



r' 



>'/W 



A££iiI.C.ATiO.N 
of 

J. G. P 0. R M A N, 

Decided Pot. 4. 1878. 

Reoorded Vol. 19. Pap:e 55 . 

oOo 

DOOLITTLE, ACTING COlvOnSSIOlIER: 

"Ecstaais," according to the Latin Lexicon, is a femi- 
nine substantive signifying "a being "beside one's self, ecstacy, " 
so that an ecstasis medical compound would be one which produced a 
state of ecstacy in the individual talking it. 

Distilled and fermented liquors are as much ecstacy com- 
pounds as the particular one of applicant; and, yet, it would be 
manifestly incorrect to say, that the single word, whether in its 
GreeX, Latin, or English dress ^v/ould fully or in any satisfactory 
manner, describe either the ingredients, composition or physical 
effects of any of these preparations. If ii: does not do this then 
the word cannot be the proper subject of a label registration; for 
it is only when of this character that it can be thus protected 
under the statute. 

The word ecstasis, for ecstacine'is clearly a fanciful 
term in its particular association, and is nothing buir an exagger- 



^■^ 



J. G. Forman, Sheet -2- 
ated trade designation which finds protection, if at all, as a 
trade marJ:, Under the established practice of the Office, it can- 
not be included as part of the label presented by applicant and 
he will, therefore, be required to expunge it before the certifi- 
cate of registration can issue. 



*y^ 



i$ 



»>. 



*^ TC 



y^-rtf-^^-/ e^^f-^i^rfVi'^ /*? ^ A^'^'"' 



of 
A. 4 M. L A N D 0. N, 

Decided Oct. 8, 1878. 

Recorded Vol> 19, Pap;e 57 . 
oOo 

DOOLITTLE, ACTIITG COIC.II SSI ONER: 

In McLean v s. Fleming , 13 O.G., 913, a trade mark V7as 
sustained by the U. S. Supreme Court whicli was said %Q) consist of 
two separate parts, viz: a red wax seal stamped with an inventor's 
name upon a "box lid, and a surrounding (enveloping) la-ool or wrap- 
per containing certain devices. 

In Preese & Co. vs. Baclof, 13 0.G., G35, the trade mark 
sustained by Judge Wheeler had five or six diGt?4ct elements; the 
form of the package, a pink wrapper, a crimson paper of directions, 
a yellow paper of v/arning, and two white labels, one upon each end 
of the package, and with certain imprinted matter thereon. All of 
these elements, by their long association in connection with the 
preparation of a particular article for the market, were held to 
constitute the mark upon which the purchaser relied in ascertain- 
ing Individual origin, irrespective of the printed matter which 
the various papers contained. 



M 



JU 



A.^c M. Landon, Sheet -2- 

In view of these oases, the fact that applicant's marX 
is to be found in part upon each of tv/o separate papers, ¥70Uld not 
seem to impair its validity; certainly not at coiYinion law, and the 
statute is silent as to anything to the contrary. Notice, howev- 
er, that where a marlc is of this complicated character, (in sever- 
al parts, or of several arbitrary devices, ) it is the combination, 
the association of parts entire, and nothing less, which consti- 
tutes the marK, and which alone is protected by certificate. If 
another use something less than the complete assemblage of ele- 
ments, no liability is incurred under the certificate, (Tucl^er Co. 
vs. Botington, 9 O.G., 455,) so that the registrant is concerned 
far more than the Office in the simple character of his mark. 

It is probable that in the particular case in hand the 
tv7o separate labels have been used in common for a long number of 
years in distinguishing the article of trade to whichi they are ap- 
plied. If either were omitted, some question would arise in the 
mind of the buyer as to the genuineness of the goods received were 
he accustomed to rely upon the double label in purchasing. More- 
over if the applicant stated that either of the labels 7;ith its 
arbitrary matter were the mark he had used and intended to protect 
(and this Yfould be necessary under the statute in event he were 



)- 



%w ^-^ 




(^'» 



4 



i 



A. & M. Landon, Sheet -3- 
required to file a separate application for each synibol, ) then it 
would be manifestly untrue in fact, for it is the association of 
all the distinct arbitrary elements which he has employed as a i 
trade designation. 

However confusing it may be in result to Office classi- 
fication, it is not seen upon what authority marlcs of this complex i 
nature can be excluded from the benefits of the act. 

V/hat is or is not the subj'ect of applicant's mark is 
left ¥7ith the Examiner at tlie present stage, for it resolves its- 
elf into the simple inquiry respecting arbitrary words or devices, 
and that inquiry belongs with him in the first instance. 

Under the Simpson decision, (10 O.G., 333,) the appli- 
cant will be required to exclude all descriptive matter, and to 
confine his marlcs to those arbitrary characters, which by their 
association distinguish his goods. 



■4 '.^ 



4k 



APPLiC.AT10.1T 
Of 
^^VERl MANU1AC.T.IJR1NG C 2* * 

DGOlded Pot. 17, 1878 , 

Recorded Vol, 19, Pa^^e 6S. 

oOo 

DOOLiTTLE, ACTING coi.'i;.:issiom:]R: 

In this case the words "Covert Snap" are sought to be 

registered as a trade mark. The snap in question was patented 

Feb. 25, 1868 and Sept. 50, 1873. The application is iriade by 

James C. Covert in behalf of tlie "Covert Manufacturing Company". 

It is the proper name of the article, and neither under the common 

lav;, nor under the statute is it proper matter for registration. 

See the case of the Consolidated Fruit Jar Company . 14 O.G.,269. 

The decision of the Examiner of Trade Marl?.s is affiniaed. 



u:^ 



• 






u 



fj/^'^^^t' 



(/.^i^-^*-- 



of 
JDAVI.D 1. BRO.WN_& C.O.., 



Decided Oct. 29, 1870 . 



Recorded V o l> 19, Pap,e 63 , 



■oOo- 



DOOLITTLE, ACTING COIiinSSIOlIER: 

"Prize Medal" soap in any ordinary and usual acceptation 
is sucii soap as has obtained a prize medal for some supposed ex- 
cellence or superiority. It is manifest that all manufacturers 
who have at any time obtained prize medals for their soap products 

are entitled to denominate such soaps "Prize Medal" soaps. If the 

been 
article made by the present applicants has at any time thus dis- 
tinguished, the term "Prize Medal" soap is properly descriptive of 
its character. If their soaps have not won any such distinction, 
then the use of the term "Prize Medal" is false in its suggestion, 
and tends to deceive the public by its use. 

A parallel trade term, "Premium TicKings" was discussed 
by the Court in AmoskeaR Co . vs. Spear . Cox's Trade Marl^ Cases, 87 , 
and met with emphatic condemnation^ ^ U-n.O, ^°70 

It is not seen in what essential the present term dif- 
fers in principle from the one therein discussed. It is either 
doscrlptive or deceptive, and in either point of view is without 
right to protection. 

Registration is refused and the action of the Examiner 

affirmed. 



i) 



< 



i 



-fXJ 



Of 
CAV^D ^. JBRO.WN & ^^. , 

Decided Pot. 51, 1878 . 

Endorsed on Examiner's Brief o 
oOo 

DOOLIT'TLE, ACTING COI;MI SSI ONER: 

It is not necessary to review the various objections 
urged by the Examiner of Trade-Marks, hOYieverJ sound they may be: 
The vital objection, in my opinidin, is this: The words "Gold. Prize" 
are either descriptive or deceptive: To me. and I believe to the 
public generally .they would indicate that a gold prize had been 
given to the manufacturer of this article, and its value to my 
mind would be enhanced thereby. If no prize had been obt^ned the 
words are deceptive. In either case they are not the proper sub- 
ject of a Trade IvlarK. The decision of the Examiner is affirmed. 



of 

D. ^. B R £ 1 N 5: C. 0.. , 

Decided Oct , 51, 1878 > 

Recorded Vol . 10, Pape 69 , 

oOo 

DOOLITTLE, ACTING COLCJI SSI ONER: 

Witii the whole ranse of arbitrary words and symbols to 
choose from, it is incoinprehensible that the applicants should in- 
sist upon the registration of a phrase or sentence, which either 
informs the public of a fact in relation to the goods associated, 
or else misleads. 

It is no uncoimrion thing for dealers to insert coin or 
articles of value in the luerohandise they offer to the public, and 
from the Office records, it appeairs that these very applicants 
havfi so planned to prepare soap for the trade. To attach the in- 
formation "there's money in it" to the soap bars, either states a 
truth, or else it deceives. The law was not intended to foster 
any such doubtful practices, and the registration is accordingly 
denied. 

Examiner affirmed. 



(^ 



?i/^ 



L//W 



of 

^. HERN^KEXM & BRO.., 
Decided Hov. 15, 1878 > 

Reoorded Vol, 19, Pa^e 95. 

oOo 

DOOLI??LE, ACTING COIvDnSSIOIIER: 

Applicants' fao simile contains the v;ords "Little Brown 
Jug," but in his statement he alleges that the trade marl^ consists 
Of the arbitrary word "Jug", to be usually in connection with the 
words "Little Brown", but that the 7:ords "Little Brown" may be 
omitted, or other words substituted therefor without changing the 
trade marlc. 

I agree with the Examiner, that looS.ing to the fac sim- 
ile alone the public would naturally infer that the vrhole phrase 
constituted the trade marX. 

But, in my opinion, the law gives to the statement and 
the accompanying declaration/ the office of defining and limiting 
the trade maric, and the public must resort to them, just as in 
patent cases the specification and claims must be consulted to 
learn the extent of the invention claimed, although the drawing 
may show the invention in connection with matter not claimed, for 

I 



'W^ 



S. Hernsheim & Bro., Sheet -2- 
for the purpose of illustrating the mode of application. 

Section 4937, Revised Statutes appears to expressly re- 
quire, that the fac simile shall shov; the mode in \7hich a trade 
mark has been, or is intended to be applied and used. 

My conclusion, therefore is, tliat it is opposed to such 
requirement to confine a fac simile to the precise word, or symbol 
constituting the essential trade narK.; but, that the fac simile 
may show the usual ¥7ay (not many or all ways, however, ) in which 
the trade mark is applied in connection with other matter. 

The decision of the Examiner of Trade Marks is reversed. 



i 



n. 



^^C^^^ftt^^'-r^ ^T*^ 



AZ£IilC.ATI.O.N 
of 
AMERICAN MACHINE 



C 



Decided Nov. 16, 1878 > 



Recorded Vol. 19, Pap!:e 101 



-oOo- 



DOOLITTLE, ACTING COlvCII SSI ONER: 

In this oase I am of the opinion, that the figure of the 

crown and the word. cro'-.Tn, are equivalents. If there had been any 

( 

other forra <f a crown registered upon domestic hard^vare objection 
might be properly made to the registration of the figure and the 
word in the present case, if the two were not distinguished by 
some peculiar characteristic which v;ould prevent the misleading of 
the public. I fail to see what other terra can more properly be 
applied to the figure in this case than the 7;ord crown. True 
there are different kinds of cro^jms, and if a species, with its 
particular name, such as coronet and varying in shape and appear- 
ance from the present crown were used on the same class of goods, 
no interference therewith, I apprehend, would exist. 

The Examiner well says, there cannot be a generic claim 
in the registry of a trade mark. So there is no harm in permitting 
the use as a trade marK of a generic term, or a generic sjonbol, so 



U\J 



'^\^ 



American Machine Co., Sheet -2- 
long as the term of a specios of that clans, or the characteristics 
of the same are suf J'iciently distinctive to prevent confusion and 
deception when applied to the same goods.' 

Has the marls, such qualities as will distinguish it from 
another mark when used on the same class of goods, is the true 
question in such cases, without regard to the fact of its being a 
generic or specific term. The decision in the case of V/eaver 10 
O.G., 1, governs the present application.' 

The action of the Examiner is reversed. 



y\J 







AZZliI.C.ATI.O.N 

of 

G0.^JDWX1I & C 0^,, 

Decided Nov. 25. 1078 , 

Recorded Vol. 19 « Pap;e 112» 

• — oOo 

DOOLITTLE, ACTIIIG COmil SSI ONER: 

In this case the trade mark soiigiit to be registered is 
described as consisting "essentially of a single dark strip or 
band of substantially uniform width, as shown in the fac simile , 
extending along the side of a white or light colored package from 
end to end." The strip is further described, as being sufficient- 
ly darker than the general surface of the package to contrast 
strongly with it. 

Registration of this mark iiiust be denied on tv/o grounds 
First, That the proposed mark as shown in the fac simile, is 
substantially made the subject in a claim of a patent granted to 
G. C. Emery, #206,368, August 6, 1878. 

The first claim in that patent is for a "sidestrip of 
paper or other similar material, pasted or guimned to extend from 
top to bottom, and connect with a free flap over the top, and ^ 
flap gummed over the tuck in the bottom", as set forth in the fac 
simile filed herewith. 

* 



i_ 



w" 



Goodwin 3: Co., Sheet -2- 

That which has been made the subject of a patent, can- 
not be registered as a trade mark, for the reason that it is a 
part of the consideration for which the Government grants a patent 
that at its expiration the matter therein claimed, shall become 
the property of the public, 

A trade laarX under the law, remains in force for thirty 
years; and to permit the same to be protected so as to give its 
exclusive use to a patentee long after his patent has expired, 
would be a fraud upon the public. The Consolidated Fruit Jar Co. 
(14 O.G. 269.) 

Second, The matter described and illustrated performs some- 
thing more than the mere function of a trade mark, viz: that of an 
ornamental appendage, and also the mechanical function of a seal- 
ing strip. The sole and independent quality of a trade mark, which 
is simply to distinguish the goods "of one manufacturer from the 
same goods made by another, is thus impaired. Jacob Gordon (12 0, 

G. 517.) 

I do not mean to hold herein, that a trade mark is ob- 

;)ectionable on account of its being ornamental, but whether ornamen- 
tal or not, it must be clear that it is not used as matter of orn- 
amentation alone, but that it has as above stated, the independent 
and sole quality of a trade mark. 

The decision of the Examiner of mrade Marks is affirmed. 



^ 



i 

m 






U^J 



i 



\ 



• 



S 



A ZL k 1 1 A 1 1 ^E 
of 

HENRY 1EAR_S 5: ^^., 



/ 



Deoided Dec. 5, 1878. i 

Recorded Vol. 19, Pa.'^e 129. 

oOo 

DCOLITTLE, ACTING COIvG;fI SSI ONER: 

In tills case applicant seeks to register as a trade mark 
the word "Queen, " arranged as sho'STn in his accompanying fac simile^ 
The fac similes show that word in skeleton gold letters and print- 
ed upon the blades of razors. 

The application has been rejected upon the reference to 
the registered case of !I. Joseph, September 4th, 1877, which cov- 
ers the words "Queen's Own", for the same article of cutlery, 

I find by the sworn statements and declarations of the 
respective parties, that the trade mark of applicant has been in 
use for about eight years, while that of Joseph had been in use 
for only four years prior to 1877. 

The following distinctions are alleged to exist between 
the present mark and the reference; first, different meaning; sec- 
ond, different form, third, different words. The words "Queen's 
Own," is the proper appellation of a well known English regiment. 



/ 



■^t-J 



H. Sears &. Co., Sheet -2- 
The words are stamped difforontly upon the blade of a razor, and 
are distinguished from the word "queen", by the addition of an 
apostrophe, and the word "own". Also the essential part of ap- 
plicant's mark, is the skeleton gold letters in which it is print- 



ed. These distinctions, and the fact of long prior use svforn to 
by the applicant, are sufficient, in my judgment, to prevent the 
deception of purchasers using ordinary caution. 



4 




of 

W. T.. C.O.IiEMA^ & C.O.., 

DecidGd A:pj44-12r. 1079 . 

Endorsed on Examiner' s Brief . 

oOo 

DOOLITTLE, ACTIIIG COinvIISSIOHER: 

The term "Eleatrio light" applied to the candle of ap- 

a^ "— • - ■ - 

pi i cant is entirely fanciful and arbitrary as if applied to a com- 

A 

mon tallow candle, in ray opinion, and for that reason is neither 
descriptive nor deceptive. It is ^VL&t as appropriate to this 
class of goods as the words "Rising Sun" is appropriate to stove 
polish, indicating a quality in a highly fanciful manner. 

The decision of the Examiner of Trade Marks is reversed. 






(C 



ff ../ 



appIi1^ati.^n; 
of 
HOiWARD & BUiiWARE, 

Decided April 12,1879 . 

Rccordod Vol> 19, Papie 565 . 

PAITIE, C01.EII SSI oner: 

T^^ applicants whose place of business is in the State 
ef Kansas, present for registration a label which has the followin 
title:- 

"HCV/ARD'S CALIPOraiA LIAGIC SUIT STROl^ LIITIMEITT" 

The primary examiner refuses registration on the ground 
that the words "California Magic", included in this title are fan- 
ciful in their signification and therefore only registrable in a 
trade marlc. 

The applicant's attorney suggests, that the rord "Cal- 
ifornia'', here means "golden", referring probably to the color of 
the liniment, and that the v/ord "magic" means, that the action of 
the liniment is instantaneous. 

I do not thinlc that those words would of themselves or- 
dinarily convey such meanings. The significations given by the 
applicant's attorney to the words seem to me to be not the ordi- 



^ 



ft 



1 



i 



^ 



Howard & Bulware, Sheet -2- 
nary significations conveyed "by the words themselves, "but extra- 
ordinary or fanciful meaniiiss v/hich require additional explana- 
tions to maKe them understood. 

The decision of the primary examiner is therefore af- 
firmed. 



AZZiiI.C.ATI.^N 
Of 

£AC.K^OiN RILEY, 

Decided April 19. 1079 . 

Recorded Vola 19. Pa^e 5S5 . 

PAIITE, COMIII SSI oner: 

Riley applies for the registration of the term "Soft 

Mash," as a trade mark for whl skies « The primary examiner ro- 
.-.^ — 

O'ects the application on the ground, that the term when applied to 
whiskies, is dc 3Dptiii«o . I concur in this conclusion, and for sub- 
stantially the some reasons which he sets forth in his answer to 
the appeal. 

The decision of the primary examiner is affirmed* 



V, 



■» 



of 

PRAXC.H Z. BRAILLARD, 

Deoidod May 1, 1879 . 

Recorded Vol, 19, Papie 594. 

— oOo 

DOOLITTLE, ACTIIIG COiLII SSI ONER: 

Applicant's trade mark consists of the figure of a 
sphinx and the letters "S. R. L." applied to a liniment ^anufac- 
tured by him. Registration is denied him by the Examiner in ref- 
erence to registered trade mark #4:002, the same being the figure 
of a sphinx applied, "Bitters and other Medicinal Preparations." 

A liniment may be a medicinal preparation, but I think 
it is not an unfair inference from the language used in that case 
that registration intended to refer only to medicinal preparations 
similar to that of bitters. However, that may be, I am of the 
opinion that the letters "S.R.L.", which constitute an essential 
part of applicant's mark will distinguish his goods from those of 
registrant sufficiently to prevent deception on the part of the 
public. 

Examiner reversed. 



D 



appli.c.aii.^n; 

of 

C.ARBO.N PAi.NT C.^., 

Deoldod May 2> 1879 o 

Endorsed on Examiner's Brief , 

oOo 

DOOLITTLE, ACTING. COI^II SSI OlIER: 

Carbon being a v/ell Icnown ingredient for paints, the 
term is descriptive, and therefore not a proper trade mark. 

The decision of the Examiner of Trade Marks is affirmed. 



\ 



u 



I 



ifh-rt/^ 



^f ^Pf^^- ' 



Of 

May 19 « 1879 « 



Hereafter you will please formally reject all applica- 
tions for the registration of prints , the titles of which consist 
simply of fanciful names o r i&ords arbitrarily selected by print- 
ers, and which are not designed to be used on articles of trade by 
the applicant, until the Commissioner can in a proper case deter- 
mine the validity of such practice. 

As illustrating what I have in mind I refer to the ti- 
tles "Col. Dwight," and "La Jeunesse," in the Official Gazette for 
May 6, 1879. 

You will also hereafter, in preparing the list of labels 
and prints for piiblication in the Official Gazette, please desig- 
nate the character of the article on v/hich the label is to be used 
if the title does not sufficiently disclose it. 

DOOLITTLE, ACTING C0I.2«:i SSI OTTER: 



APPL1^ATI.0.N 
Of 

^C.H^ET.1KER & GEHRING, 
Decided May 22. 1379 . 

E ndorsed on Examiner's Brief . 

— oOo 

DOOLITTLE, ACTING COIvHn SSI ONER: 

I agree isrith the Examiner of Trade Marks that the Yrords 
"Club Room", sought to be applied as a trade mark, to cigars, so 
nearly resembles the term "Club House, " registered as a trade mark 
on the same article, as not to be substantially different, and 
^ calculated by their resemblance to deceive the public. 

In viev7 of the vast field of fanciful terms which m^ be 
drawn upon for proper trade marks, vfhen the resemblance is so 
close as in the present case, it is difficult to believe but v/hat 
such resemblance was intendedo 

The decision of the Examiner of Trade Marks is affirmed. 



r 



of 

_BETTJAMJ_N KEN T,__ 

decided May 26. 1079 . 

Endorse d on Examiner 's Brief . 

oOo- 

DOOLITTLE, ACTIIIG COICII SSI ONER: 

This whole matter, in all itc forms and substance, con- 
stitutes a proper subject for label and not a trade mark. See 
definition of label in the Appendix of Official Rules. 
Examiner affirmed. 



// 



// 



Z()XA 



i 



'X.? 



of 

lALTKRWlNlHROP, 

Decided May 2G. 1379. 

Endorsed on Examiner's Brief . 

ooo 

DOOLITTLE, ACTING COLHilSSIOlTER: 

"otylographio Pens", which are pens having a reservd>ir 
for ink, and a single sharp point lilce a style, now form a sub- 
class of inventions in this office. They are extensively used, 
and no doubt inks having certain qualities are best adapted to be 
used with them. That I thinl: would be the signification given to 
the word in the present state of the art, whether so intended by 
the applicant or not. The word, therefore, is objectionable as a. 
trale inark as being in nature descriptive, and not arbitrary and 
fanciful. 

Some years ago the word might have been a proper trade 
mark, but not now. 

The decision of the Examiner is affirmed. 



W\J 



^ 



•I 



■>.• 



*, 



'»■ 




APPLI.C.AT10N; 
of 
— lillRl £• 3ERVi.E S,_ 

Decided July 7, 1879 . 

Endorsed on PJxainlner ' s Brief . 
oOo 

DOOLITTLE, ACTING COmilSSIOirER: 

I cannot agree v/ith the Examiner in the case. "Agency's 
Favorite" appears to me entirely arbitrary and not even reconmienda- 
tory, so far as a* personal application is concerned. I regard the 
references cited by applicant and the Examiner as more objection- 
able — or at least more doubtful. 

If applicant had used the phrase "Agent's Favorite" a 
doubt, the same as arises to "Planter's favorite"^ v/ould appear; 
but "Agency's favorite" stri!k.cs me as impersonal and fanciful. 

Examiner reversed. 



►'(^y' 




APPLICATION U^iM* 

— GE£RGE BKN^ E,_ 

Decided July 7, 1079. 

Reoordod Vol» 20. Pap;e 18. 

oOo 

i 

/ 

DOOLITTLE, ACTIIIG CClvCJI SSI OTTER: / 

I an of opinion that the \vord "Bombay" falls within the 
doctrine in the case of Cornv/all Bro. 12 O.G. 312, and not v/ithin 
the case of lOiapp, (the v/ord "London" being the trade marX) de- 
cided May G, 1879. 

The decision of the Examiner of Trade Marks is therefore 
reversed. 



^/W 



1 






(^ 



APPLiC.ATJ.0.1T 
Of 
i^AA^ L. li^llH, 

Deoidcd July 7. 1879. 

Record-;d Vol> 20, Pap^e IS . 

oOo 

DOOLITTLE, ACTING COICnSSIOlIER: 

The word "Masonic" is objectionable as a trade mark for 
the reason that it is not sufficiently arbitrary. It signifies in 
some degree certain qualities, such as origin and excellence. 

Its employment might not lead to actual deception, es- 
pecially among the masonic order, but it would have that tendency. 

At any rate it ?/ould be difficult to define the princi- 
ple by which such a word should be allowed registration. and anoth- 
er differing in descriptive qualities in degree only, should be 
rejected. 

The decision of Examiner of Trade Marks is therefore 
affirmed. 



'^ 



APPLiC.ATI.O.N 
of 
JO.HN WHlllAKER, 

Decided July 0, 1879. 



Endorsed on Examiner's Brief, 



-eOo- 



DOOLITTLE, ACTIIIG COLEII SSI ONER*. 

It being settled law,' that a person cannot adopt as his 
trade mark the color of the package in which his goods are enclos- 
ed, and as it is the practice of applicants to enclose their hams 
in white packages and the word "white" not being appropriate to 
the color of the hams themselves, it simply indicates to the world 
the same thing as the color, and nothing more nor less. 



The decision of the Examiner of Trade Marks is affirmed. 



<*/* 



I 



A P P L I C A T I IT 

OT? 

EAlL2.EAk RUBBER CO., 
Decided July 11. 1879 . 

Endoroed on Examiner's Brief . 

oOo 

DOOLITTLE, ACTING COHLIISSIOITER: 

The doctrine of the Goodyear Ruboer Co. case, 11 O.G. 
1062, is applicable to the present matter, and is now reiterated 
and reaffirmed. 

The decision of the Examiner of Trade Harlcs is affirmed. 




b 



u *^ ^ 

A P P L 1 C. A 2 I. ^ N 
Of 

L'^AHDEE & 2 2', 
DecldGd July 28. 1879 . 

Endorsed on Examiner's Brief . 

oOo 

DOOLITTLE, ACTING COlEilSSIOIIER: 

The sense in which the word "Sterling"* is obj'ectionalDle 
is in that sense in which it is defined by Webster as "genuine, 
pure, of excellent quality." 

All who make rubber goods have the right to represent 
tham as of "excellent quality", and, therefore, have the same rigiit 
as applicant to apply to ' them the word" sterling". The word, as 
thus used, is purely descriptive, and, therefore, objectionable as 
a trade mark. 

Examiner affirmed. 



KJ 



n 




m 



A 



of 

__JO.^N F. FRES E,__ 

Decided July 28, 1879 > 

R ecorded Vol> 20, Pa^e 54« 

oOo 

DOOLITTLE, ACTING COLnvIIGSIOlIER: 

I agree with the Examiner that the word "inoomparable" 
is not fit subject to be registered as a trade marX. But if it 
were not a coinmon practice to draw the attention of the public to 
advertisements, occ. by printing blacX lines upon their face the 
presence of such a line over this word might give it a different 
significance than that of a merely descriptive word. It is feared 
however, that should the practice be countenancad in a single case 
of allowing descriptive words to be registered when combined in 
this ordinary manner with such a mark, a precedent would be es- 
tablished by which all descriptive v/ords and terms presented as 
trade marks would have to be registered when used in the same con- 
nection. It is also doubted whether the dash renders the word suf 
ficiently distinctive to protect the public from the purchase of 
spurious goods on which the word "incoEiparable" might be printed 

without the marX across it. 

The decision of the Examiner is affirmedo 



; 



A 



:» 



/ 



ALLkl£.AlLQ.R 
of 

THE LR. HARTER MEDl^illE ^^. 
Deoidod July 29,1879 . 

Endorsed on Examiner's Brief, 



-oOo- 



DOOLITTLE, ACTING COin.II SSI ONER: 

The d'.jcision of the Examiner is affirmed. The doctrine 
of the U. S. Supreme Court as set forth in the case of the Canal 
Co. VG. Clarlv . 13 Wallace, 311, has become the settled practice of 
the Office, and that is, that "a generic name or name merely de- 
scriptive of an article of trade, of its qualities, ingredients, 
or characteristics, cannot be employed as a trade marX, and the 
exclusive use of it be entitled to legal protection." 

Applicant may amend its application and restrict the 
trade marli to the monogram and shield. The balance of the label 
should be registered as a label. 



:5> 




4 



I 

\ 

I 

I 



4i 



M 
** 



A Z Z L 1 C. A T I. 2 N 
Of 

Z£lll & M. 2 1 ^Kt 
Deolded Aug. 4, 1079 > 

Endorsed on Examiner's Brief . 

oOo 

DOOLITTLE, ACTIITG COICil SSI OTTER: 

I ain cloarly of tiie opinion that the proposed amendment 
does not obviate the objection that the marK of Dowie &. Moise so 
nearly resembles that of Zcxlin & Co. as to be likely to deceive 
the public. 

The decision of the Examiner of Trade Marks is affirmed, 




/ 



■\ 'J 



N 



LZL k 1 ^ A 1 1 Q.E 
of 

ZIVEAR, HAMDEN & C.O., 
Decided Aup;. 4, 1079, 

Endorsed on Examiner' s Brief , 

oOo 

DOOLITTLE, ACTITIG COinilSSIOIIER: 

In my opinion the term "Franco-American" (which has been 
applied to a French-American steamship line and a French-American 
newspaper) has "by usage "become a descriptive term, and not proper 
matter for a trade marl:. 

The decision of the Examiner of Trade Marks is there- 
fore reversed. 




^^ 




^ 




i^t^^^^^' 



A ZL k 1 ^ A 1 1 Q.E 
of 

J^HN A. BR^WN & ^0.., 
Decided Auf.. 15.1879 . 

Endorsed on Examiner 's Brief. 

oOo 

DOOLITTLE, ACTING COiCa SSI ONER: 

"Standard" acoording to ¥/eTbster, raeans "having a fixed 
or permanent value." All those then who nanufacture watches or 
watch cases of a uniform grade or quality have the common right to 
the use of this term. As observed "by the U, S. Supreme Court no 
one has a right "to appropriate a sign or a symTbcl TJhich from the 
nature of the fact it is used to signify, others may employ with 
equal truth, and therefore have an equal right to employ for the 
same purpose." Canal Co. vs. Clark , 13 Y/all. 

The decision of the Examiner is affirmed. 



^^a 



A LL k L 2. h. IL £.E 
of 

c.. T., §.1. LZ !• 
Deoldod Au.q;. 16, 1879 < 



Recorded Vol> 20. Papre 69, 



■oOo- 



DOOLITTLE, ACTING COlCilSSIOKER: 

Applicant is the proprietor of what he oalls "Swifts - 
Syphilitic Specific," and he desires to register as a trade mark 
the letters S>S.S> 



The registration is objected to on the ground that they 
are not arbitrarily used, being merely the initial letters of the 
several words forming the phrase above quoted, which phrase ap- 
pears on the same label. 

The question to be determined is the same that so 
frequently arises with other applications for registration of 
trade marks. I^ the proposed symbol in view of the article to 
which it is to be applied descriptive of the character of that art- 
icle so that all others malcing or selling the same article have 
the right to use the same symbol? If so it cannot be appropriat- 
ed by applicant as his trade marlCa Canal Co> vs. Clarlc 13 Wall., 
Sll. 



m. 



C. T. Swift, Sheet -2- 
It was held in the case of J. _S. Johnson & Co . 2 0.G.315 
that the v/ords and letters "Parson's Purgative Pills P. P. P." did 
not constitute a proper trade mark, and that the initial letters 
added nothing to a phrase which is not a lawftil trade mark without 
thBm, That their precise meaning became evident from the v/ords 
which they accompanied, and were as much descriptive as the words 
themselves. 



In that case the words as well as the intials were to 
form an essential part of the mark. Hero the letters only are to 
constitute the mark; "but the fac simile and the specification both 
show and restrict the letters to use on the labels which are to be 
affixed to bottles of the medicine, and on v/hich also in close con 
neation with the initial letters occurs the corresponding phrase. 
•This close comaection brings thera practically within the doctrine 
of thG Johnson case as v/oll as that of BlaXeslee Cc Co.,Commr's. 

Dec. 1871, 284. 

As remarked by the Commissioner in Johnson's case, the 

letters themselves would probably be regarded as a legal trade 
mark. That is, disconnected and unaccociated ?;ith any phra;:^e of 
which they were the initials, and presented to the Office as an 
arbitrary independent symbol, indicative of no particular announce 



*' 

-^ 



'^.^ 



C. T. Swift, Shoet -3- 
ment as to character of the goods. In this sense letters and 
monosr?jns have been pro:)erly registered as trade marks. But the 
letters in this application are not employed in this imohject ion- 
able manner. 



The decision of the Examiner of Trade Marks is affirmed, 



:4 



3* 



APPL1C.ATI.0.N 
of 
CAMDEN CONSOLIDATED OIL COlgANY. 

Decided Auk. 16, 1879. 



Recorded on Examiner's Brief, 



-oOo- 



DOOLITTLE, ACTING COIEa SSI ONER: 

The word sought to "be registered is a proper name for 
the article, or a similar article, to which it is to be applied. 
Registration must therefore be denied* 



Examiner affirmed. 



» / 




)0 



M^IJ 



A P P L I. C. A T 1 0. N 

of 
ISAAC. L. SMI.T H,__ 

Decided Aug. 26, 1879 . 

Recorded Vol. 20, Paf^e 114. 

ooo /^<^^/^i^ 

PAINE, COIvEvII SSI oner: 

The question is v/hether the word "Masonic" can be law- 
fully registered as a trade mark? 

Although, the noun from which this adjective was formed 
is old in our language, the adjective itself seems to have been 
contributed to the language by the order to which it applies, and 
its only meaning is "pertaining to the craft or mysteries of free 
masonry." 

Applied as a trade mark to cigars it would be descrip- 
tive of the cigars, connecting them in origin or use or adaptation 
with the Masonic order. The words Presbyterian, Methodist or Ro- 
man Catholic, used as a trade mark for cigars, would stand on the 
same footing. Such v/ords are not registrable as trade marks. 

The decision of the primary Exajniner is affrrmedo 



3U 






APPLl^AT.iO.N 
of 
C.HA^. il^jCAR MoC REEDY, 

Decided Auk. 28, 1879 . 

Endorsed on Examiner's Brief . 
oOo 

DOOLITTLE, ACTIIIG COmil SSI ONER: 

I do not regard the trade mark No. 2,0G5, as a proper 
reference. The decision of the Examiner is reversed, therefore, 
as to that objection. 

The aiiiendiiient this day submitted and approved appears to 
me to exclude the words "McCreery's Corn Solvent" as an essential 
part of the mark, and leaves that phrase as simply restrictive as 
to the connection in which the real mark, viz: the figure of the 
boot, is to be used. 



3C5 



AP.PL1C.AT.I.0.N 

Of 
GOODWIN & C, 2- 

Decided Sept. 15,1870 . 



Endorsed on Examiner's Brief, 



■oOo- 



DOOLITTLE, ACTING COLail SSI ONER: 

On consulting Webster I find his definition of the word 
"SuperiD" entirely inapplicable to a description of che-.7ing to- 
bacco; and of opinion therefore that it is a fanciful arbitrary 
term in that connection, and a suitable trade mark for that arti- 
cle. 



The decision of the Examiner is reversed. 



tJO 



1 



1 



of 

GEOLRG.E A. WEI,S^, 
Decided Uov. g5.1879> 

Reoorded Vol. 20, Papie 216. 

■ oOo 

PAINE, coi^igsioiier: 

In ny .judgment the proposed trade inarX is not open to 
the objGotions suggested by the Examinero But his objection to 
the language used in applicant's argianent is well taken. Under 
the rules of the Office, the argument in its present form cannot 
be admitted to the files of the case. 






JtU 



APPL1C.A110N 
of 
G.E^RGE A. 111^^ & ^0.., 

Decided Jan. 1G« 1880 , 

ReoordGd Vol. 20, Vaf^e 528 , 

oOo— '■ 

PAIIIE, COlEil SSI ONER: 

This is an appeal from the Examiner in charge of trade- 
marks who declines to register the term "Salvator" applied as a 
trade mark to Beer. I do not concur in the opinion of the Exam- 
iner that this term is incapable of registration as a trade mark 
because usually applied to the founder of the Christian religion. 
Salvator Beer has been v/ell known in Eurorpe for generations, if 
not for centuries. Mueller's Hand Book, for beer brewers, pub- 
lished in the German language at Braunschweig in 1854, in a chap- 
ter descriptive of five well knovm kinds of Bavarian beer, con- 
tains the following statement :- 

"The Salvator beer also belongs to the class of fancy 
beers as it is somewhat stronger and richer than Bock Beer. 

The Salvator beer has its origin, or more correctly sta- 
ted, its name from a brewery in Munich, which in former years, was 
under a monastical order; and it is not improbable that the Fath- 



m:\j 



i. 



i 

f 



'^ 



'X\J 



Weiss 5c Co., Sheet -2- 
ers, first of all, had this strong beer "brewed for their ovm re- 
freshment, until finally in later times, the brewery passed into 



other hands. 



The Salvator Tbeer was made only in one brev;ery in Mxi- 
nich, that of Zacherl, (suburb Aue ) and sold every year in the be- 
ginning of April, and only during six days; so that the manufac- 
ture and retail of this beer remained, up to a very.reoent period, 
a monopoly, and the other brewers of the city were not permitted 
to manufacture it. But in the year 1848, monopolies of fancy beer 
of all kinds were abolished, so that now they can be produced in 
any other brewery. 

For the production of Salvator beer, as of BocX Beer, it 
is necessary to use the best malt, which iiiuist have been in store 
for three months, and the finest Saaz (Bohemian) hops; and it gen- 
erally requires one bushel (scheffel) of dry malt to produce four, 
at the most 4 & l/4, Eimer of beer, and throe pounds of hops are 
required for each bushel. The process of brewing or fermenting is 
the same as for Boclc beer; the rules are likewise the same for 
boiling the herbs before and after putting in the hops. The beer 

- 

herbs have to be refrigerated up to 7/8 R; but it receives gener- 
ally more stuff v;hereby the fermentation (and sub- ferment at ion) is 



^'X J 



* ') 

/»•' 



^-t!' 



Weiss & Co., Sheet -5- 
finished a few days sooner. The ferment od beer is put, v^hon still 
somewhat young, into barrels (to procure an earlier sub-fermenta- 
tion; and, if, after being in the first barrels) into which it 
is poured from the fermenting vats, it v/ill not become clear, then 
it has to 'be put into other barrels, v/hich have to be generally 
filled up with clear beer of the sane sort, brewed likewise in the 
best season (December or commencement of January), and then left, 
like BocX Beer, to sub-fermentation, to rest two and a half or 
three months. 

The Salvator beer is not usually bunged, and therefore 
foams but little, but it is very strong. Its color is a very dark 
brown and it has a bitter after taste of hops. The herbs out of 
which, this beer is made, show at the sacdiarometer, from 17 1/2 to 
18 1/2 per-cent, and after it has been in store for several months 
it shows a quantity of alcohol from 4 3/4 to 5 1/2 per-cent, v/hich 
depends also on the changes which have resulted from the after 
fermentations of the sugar of malt contained in the beer." 

In the American Cyclopaedia, Vol. II, p. 4G9, published 
in 1874, it is stated that "There are many kinds of beer brewed in 
Bavaria, and also in other parts of Germany which receive particu- 
lar names, as Bock, Heiliger Vater, Aug^astine double, and Salvator 



^Zlt 



4 




t 



Weiss & Co., Slieet -4- 
of Lrunich, Torovm beer of Meresburg, Berlin White boer, or Champag- 
ne of the north; Broyan, a famous Hanoverian beer, double beer of 
Erlangen, Lichtenstein, and Upper Weimar. All these possess vari- 
ous excellences, particularly the Bavarian beers, most of which 
are due to the peculiar mode of fermentation." 

The work of P. Heiss, on Beer Brewing, published at Augs 
burg, in 1875, contains the following statement of the BocX and 
Salvator beer:-(pp 188-9). 

"Both these, as is v/ell known, are fancy beers of.lvlunich, 

4- 
"and were still privileged within some years, the first on the par' 

"of the royal court brewery, and the other on that of the Zachrel 

"brewery in the suburb Aue. 

" This latter was a cloister brewery, and held the right 

"as such, to brew a strong beer for the festival of Pranz de Paula, 

"which obtained the name of Salvator.' 

" Since the year 1848, however, all fancy beers have been 

"thrown open and their production thenceforth allowed in all brew- 

"eries. The manufacture of both these beers is based upon the Mu- 

"nchen system of brewing, and they are distinguished in no other 

"respects, than in strength and color, from the ordinary beers. In 

"this process at the court brewery, 36 hectolitres of dry malt 



^«^ u 



* 



tf^ 



Weiss & Co., Sheet -5- 

"are applied to one "boiling of bock beer, 
" On account of the large quantity of malt the thick mash 
•is allowed to boil one quarter of an hour longer than usual; the 
"degress of heat remain exactly the same. The hops chosen should 
"be of the best quality, and amount on an average to 581bs. per 
"boiling. By the customary rule from 2 hectolitres of malt are 
"produced 3 hectolitres of beer. The color of Bock beer with its 
"delightful flavor, io somewhat browner than that of ordinary 
"beers. 

" The primary characteristic of Book beer consists in the 
"fact, that Y/hilo drinking the hop is very notioeable, but not its 
"bitterness; on the contrary, the sweetness of the malt is predomi 
"nant. At the Zachrel brewery, on the other hand, to one boiling 
"of Salvator beer 56 hectolitres pf dry malt are taken and 31bs. 
"of hops to 2 hectolitres, which produce 3 hectolitres of beer, 
" The Salvator beer is quite brown evento blackish, and 
"has generally a bitter after tafete, which accordingto our view, is 

"to be accounted for by the fact, that v^ith so great a quantity of 
"malt, even v/ith the best endeavors, the solution of the inalt can- 
"not be attained so perfectly as needful." 

Watts' Dictionary of Chemistry, published in 1863, shows 
on page 533, of Vol. 1, the following table:- 



{• a. 



m 




Weiss & Co., Siieet -6- 
TABLE D,- SPECIAL RESULTS OF THE EXAillllTATI OH OF CERTAIN BEERS. 



Percentage of 



NAl^tE OF BEER, 

London Porter. (Barclay & 

Perlcins. ) 

London Porter 

London Porter (Berlin). 

Burton Ale 

Scotch Ale (Edinburgh). 

Ale (Berlin). 

Brussels LainTDik. 

Brussels Faro. 

Salvator Bier, Munchen.^ 

Bock bier, liunchen,' 

Bavarian Draught beer 

( Schenk bier) Llunclien. 

Bavarian Store beer, (Lager B, ) 
Munchen 16 months old. 

Bavarian Store beer, Munchen 

Bavarian Draught beer, 

Bn.inswicli. 

Bavarian beer, Y/a Ids chlosschen- 

Prague Draught beer. 

Prague Tov/n Boer(Stadt-bier ).- 
Sweet Beer, Brunswick. 



Malt . 
Extract 



G.O 

6.8 

5.9 
14.5 
10.9 

6.3 

3.4 

2.9 • 

9.4 

9.2 

5.8 

5.0 

3.9 

5.1 

4.8 

6.9 
10.9 
14.0 



Alcohol 



5.4 
6.9 
4.7 
5.9 
8.5 
7.6 
5.5 
4.9 
4.6 
4.2 
3.8 
5.1 
4.3 
5.5 
3.6 
2.4 
3.9 
1.36 



Carbolic 

Acid 



0.16 



0.57 



O.li 



0.17 






0.2 



0.18 



0.17 



0.14 



0.15 



0.16 



Water 



88.44 

80.03 

89.00 

79.6 

80.45 

85.93 

90.9 

92.0 

85.85 

86.49 

90.26 



89,75 



91.64 



91.1 



91.5 



90.7 



85.2 



84.7 



Analyzed 

^y 



Kaiser 

Balling 

Zuirclc 

Hofitnann 

Kaiser 

ZuircX 

Kaiser 

Kaiser 

Kaiser 

Kaiser 

Kaiser 

Kaiser 

Kaiser 

Otto 

Fischer 

Balling 

Balling 

Otto 



"fc'TB- 



t> 



Weiss & CO., Sheet -7~ 



Peroentaee of 



N AIIE OF BEER. 



Josty's Beer, Berlin 

Weder's Brown Beer, Berlin, 



White Boer, Berlin.- 



Biere blanche de Louvain. 



Petermann, Louvain.' 



Mum, Brunsw i cX , ■ 



: Malt 


Alcohol 


: Carbolic: 


Water. 


.Analyzed 


: Extract. 




Acid : 




by 


: 2.6 : 


. 2.6 : 


: 0.5 : 


94o3 . 


Zuircl?: 


: s.i : 


■ 2.5 


: 0.3 : 


94.2 


: Zuriclc 


: 5.7 : 


: 1.9 


: 0.6 : 


91.8 . 


: Zurich 


: 3.0 ; 


: 4.0 


1 — -. 


193.0 


:Le Ca:nbre 


: 4.0 . 


: 6.5 


; 


:89.5 


:Le Cambre 


: 45.0 


: 1.9 


; 


:53.1 


:Freytas & 
: Busse. 



ij 



1^ w t 



4 1 



•V 



tu 



Weiss & Co., Sheet-8- 

The Chemistry of Daily Life, published in the German 
language, at Leipsic, in Berlin, in 1873, contains the following 
statement on page 175. "The beers richest in alcohol are the Eng- 
lish Edinburgh Scotch Ale, containing 8.5 per-cent; Brussel's Ale, 
7.6; Lo2idon Porter, 6.9; Burton Ale, 5.9; Brussel's Lainbik, 5.5; 
Bavarian Lager Beer, 5.1; Salvator Beer, Muenchen, 4,6; Boclv Beer, 
Munchen, 4.2; Bavarian Schenlc Beer, 3.5 to 3.8; Waldschlossen, 
3.6 and Schenl^ Beer of Prague, 2.4; Stadt Beer of Prague, 5.9; 
Berlin Weiss Beer, 1.9." 

Ure's Dictionary of Arts, Vol. 1, p. 157, contains the 
following table of exhibits and results of the chemical examina- 
tions of eight different kinds of beer:- 




^4 



V"^ 



.'"M 



Weiss & Co., Sheet -9- 



Qiialntity in 100 parts by weig ht. 



NAME OP BEER. 
Augustine double "beer,I\£unich.- 



Salvator beer.v " 



Boclv beer, royal brewery-"- 



Schenk (pot) beer, Bavarian Co. 
brewery; a kind of small beer.- 

Bock Beer, Brunswidi, Bavarian — 

Lager (store) beer, of Bruns- 
wick, Bavarian kind 



Brunswick Sweet small beer 



Brunswick irrum- 



Water 



89.86 



87,62 



88.64 



92.94 



88.50 



91.0 



84.70 



59.2 



Malt 
Exl2!aQt. 



8.0 



8.0 



7 "^ 



4.0 



6.50 



5.4 



14.0 



39.0 



Alcohol 



3.6 

4o 
« t-j 

4.0 

2.9 

5.0 

3.50 
1.30 
1.80 



Carbonic 
Acid 



0.14 
0.18 
0.16 

0.16 



0.1 



Analyst 



Kaiser 



Balhom 



Otto 



Kaiser 



These facts dissipate the obneotion that the term "Sal- 
vator Beer," is blasphemous. But the same facts establish the de- 
scriptive character of the term. If used as a trade mark by the 
applicant for registration, it will be descriptive when applied to 
the beer to which it has been for generations, if not for centu- 
ries applied, or deceptive if applied to beer of a different kind. 
It is therefore incapable of registration as a trade marS. 

The decision of the Examiner of Trade Harks is therefore 



affirmed. 



C/ fiA^, 





' 




■% • 


4 4 


1 

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V 



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AZZIiiC.AT.iO.1T 
of 
G E £ R .G E _A. WEI.^1 & ^0.., 

Deolded Feb. 10. 1880 . 



Recorded V o l. 20. Pap^e 415 . 



-oOo- 



PAIIIE, COmilSSIONER: 

Weiss Qz Co. applied for the registration of the term 
"Salvator, " as a trade mark for Lager Beer. It was rejected on 
the ground that inasmuch as printed publications showed it to have 
been applied to a certain kind of Lager Beer brewed in Munich, Ba- 
varia, for many generations, if not for centuries, and also gave 
the chemical analysis of the beer, and described the process of 
manufacture, the term had become descriptive or generic, and des- 
ignated a particular kind of beer. 

The applicant siigsest, on motion for rehearing, that the 
purchasers cannot be led, by the use of this trade mark, to sup- 
pose that the beer of the applicants was manufactured in Munich, 
and is of the same kind and quality as the Salvator beer, so cal- 
led in that city, because the label upon which the v;ord "Salvator" 
is printed contains the following notice in the English, German, 



French and Spanish languages, to wit: "This beer is brewed from 



1 



rJU 



Weiss & Co., Sheet -2- 
Canada malt and Madison County hops." 

The applicants also assert, that all persons v/ho ha/e 
heard of, or tasted the Salvator beer brewed and sold in the city 
of Munich, are well aware that such beer is not brewed from Canada 
malt and Madison County hops, but is brewed from malt and hops pre 

pared and raised in Germany; and fdirther, that the great majority 

applicants 
of the purchasers of the beer have never heard of the city of Mu- 
nich, or of the Salvator beer brewed in that city; and they dis- 
dain, under oath,, all intent to deceive purchasers or consumers 
with their beer, by causing them to believe, that it was bre^red 
in Germany, or was identical in kind and quality with the Salvator 
Beer brewed in that city. 

It is not necessary that a word, in order to be descrip- 
tive in such a sense as to be incapable of lawful registration as 
a trade mark, should be descriptive of the quality or condition of 
the merbhandise to v/hich it is applied, as the word "Prime" is 
descriptive of the quality of mess pork, or "Granulated" of the 
condition of sugar; but it is enough of the term, whether having 
the s?me meaning, or a different meaning, or no meaning at all, in 
other applications, designates the kind of merchandise to which it 
is applied in the particular case, as the term "Clarence" desig- 
nates a kind of carriages, or the term "Sea Island" a kind of cot- 
V ton. 



ou 



3 



T. 



\ 



Weiss & Co., Sheet -5- 

As all persons v7ho sell prime mess pork, or granulated 
sugar, have the right to apply these terms to their merchandise, 
and all persons who sell Clarence carriages have the right to ap- 
ply the term "Clarence" to their carriages (unless prevented by 
the existence of a lawful trade marX, in favor of the persons who 
first applied that term to carriages, or of his assigns) so all 
persons who manufacture "Salvator" lager boer, the analysis of 
which is of recprd and accessible to all, have a right to apply 
that term to their byer, and no individual can monopolize the 
right, except the person who first adopted the trade marX or his 
assigns. 

The case would stand on a different footing if the appli 
cation had been made for the registration of the name "George A. 
Weiss" as a trade mark applicable to Salvator lager beer, the 
name beirig Geo. A. ?feiss' own genuine autograph, or an exact fac- 
simile thereof. George A. Weiss & Co. could, with the consent of 
George A. Weiss, register that signature as a trade marK. Such 
registration would secure to the firm a monopoly of the use of 
that autograph, in connection with Salvator lager beer, or, which 
is the same thing, of the use of the words Salvator lager beer, in 

connection with the autograph. But it would give no mol\9?P^y °^ 



f 



1 



Om> 



*-« /f 



Weiss & Co., Sheet -4- 
thG word Salvator, as applied to lager beer. Others could apply 
it to lager beer, in connect ion with other signatures, or without 
any signature. 

The word "Salvator" is, itself, inadmissible as a trade 



marS: for lager beer, Hption overruled. 



iJM 



\ 






► 



of 

Decided Dec. 8. 1879 . 

Recorded Vol. 20, Paf;e 252 . 

oOo 

PAIITE, COIIMI SSI oner: 

On the 12th o^ December, 1876, the words "The Judge Ha- 

'^■' 

■K 

bana" and the monogram "P.L.C." were registered as a trade mark 
No. 4199, for cigar boxes in favor of Perlee L. Chambers, of In- 
dianapolis, Indiana. 

The v/ord "Judge" was registered as trade marK No. 4801, 
July 3, 1877, for cigars, cigarettes, sraoking tobacco and chewing 
tobacco in favor of Hlrsch & Co. of Nevf York. 

On the 24th of July, 1877, the words "Old Judge" were 
registered as trade mark No. 4938 for smoking tobacco in fp.vor of 
Goodv/in & Co. of Nov; York, The examiner states that this regis- 
tration was inadvertently made, No. 4801 being overlooked. 

On the 21st, of June 1878, Goodwin & COa applied for the 
registration of the words "Old Judge", as a trade mark for cigars, 
cigarettes, and chewing tobacco. The application was rejected by 
the examiner upon reference to No. 4801, on the ground that the 



-W' 



9 



Goodwin & Co., Shoet -2- 
reseinblaiice "between the terms "Judge" and "Old Judeg" was suffi- 
cient to deceive the public. This re;]ection was affirmed by the 
Acting CoEmissioner. Subsequently Goodwin & Co. produced an as- 
signment from Hirsch & Co. to themselves of trade mark #4801, ex-.j 
cept so far as it applied to cigars; and thereupon the Acting Com- 
missioner granted registration of the words "Old Judge" in their 
favor, as a trade marX for cigarettes and chewing tobacco, but not 
for smoking tobacco. This registration was numbered 7274, and 
dated Llay 6, 1879. 

On the 9th of May 1879, Goodwin & Co. applied for the 
registration of the words "Old Judge", as a trade mark for cigars, 
and were r^ jected on registration #4801. From this rejection they 
appeal to the Commissioner; and they present two documents dated 
November 26, 1878, one executed by P. L. Chambers, and the other by 
Goodwin & Co. The former purports to be an assigranent by Chambers 
to Goodwin & Co. of the cigar-box trade mark #4,199. The second 
purports to be a license back by Goodwin Sz Co., to Chambers to 
sell under this cigar-box trade mark, "so far as a right is secur- 
ed under said trade mark, for and during the term of his natural 
life," and a stipulation by Goodwin & Co., not to manufacture ci- 
gars under the trade mark themselves, nor to grant to any persons 



F 



» 



*'^-^ 



Goodwin & Co., Sheet -3- 
exoept Chambers, the right to manufacture. This stipulation is 
not limited as to time. 

The appellants insist that this assignment gives them 
the same right to the registration of the v/ords "Old Judge", as a 
trade marX for cigars, \7hich Hirsch's assignment gave them to the 
registration of these words, as a trade mark for cigarettes and 
chewing tobacco. 

The decision of the Acting CoirnTdssioner granting regis- 
tration of the words "Old Judge", as a trade mark for cigarettes 
and chewing tobacco, based upon the assignment of Hirsch & Co., 
notwithstanding his former decision that the symbols "Judge" and 
"old oudge" were so nearly alilce as to deceive the public, was fi- 
nal in that case and cannot be disturbed. 

But in this new case I. should be unable to adopt it. It 
seems to me to be opposed to the policy of the law to register, 
whether for the same applicant or whether for different applicants 
two different trade marks which resemble each other so nearly as 
to be likely to deceive the pmblie. Wlien their resemblance is so 
close, the registration of one excludes all but the registrant 
from the use of either. The registrant may use both, one because 
it is registered in his favor, and the other because there is no 



Goodwin & Co., Sheet -4- 
onc to contest his right to use it. But the separate registration 
of such similar words, even in favor of one applicant, would in 
cases of assignment to different purchasers, occasion embarrass- 
ment which it is the policy of the law and the interest of the 
public to avoid. 

But then, the difference betvreen the assignment of 
Hirsch & Co. and that of Chambers, was very marlted. The former 
transferred the exclusive right to manufacture and sell cigarettes 
smoking tobacco and chewing tobacco. But what, if anything, the 
latter transferred, it is not easy to perceive. ■ The trade marX 
which constitutes the basis of the transaction was the trade marX, 
not for cigars, whether in bunches or in boxes, but for cigar- 
boxes. It does not appear whether Chambers was a manufacturer 
and vender of cigar-boxes alone, or of cigars, of» of both, And 
then the effect of tiie documents is not to transfer to Goodwin & 
Co. any right whatever to manufacture cigars, whether under this 
cigar-box trade mark or any other trade mark. On the contrary 
they bind themselves by stipulation not to manufacture cigars. 

Whatever rights Goodwin & Co ^ may have acquired by the 

purchase of the trade mark of Chambers* are probably as perfectly 

secured now as they would be if this proposed new registration 

were superadded. But whether they are or are not so secured, and 

whatever they may amount to, the present application cannot be 

lawfully granted. 

The decision of the Examiner of Trade Marks is affirmed. 



■ 



of 

P. C.E1T2EMERI. & C.O.., 

Deoldod LCaroIi 17, 1800 . 

Reoorded Vol. 20, PaF,o 489. 

oOo 

PAIIIE, coicnssioiiER: 

The ap7jlicant seelis to register as a trader mark for 
glove^ a loopGcI "flourish",, in connection with his name, "Cente- 
meri," If his proposed trade marlfc vzere merely a pimctuation marlv 
placed after his name, it v/ould not be registrable as a trade mark. 
But vhe figure of a diamond or of a star so used would "be regis- 
trable. There vfould be no room for doubt in either of these tvro 
cases. The proposed symbol i^^presents a case which falls between 
the two. It ±2 not free from doubt. I resolve the doubt in favor 
of the applicant; but he can only use the marX in connection with 
the name "P. Centemeri," for that is the only name shown in his 
fac simile. 

The decision of the primary Examiner is modified accord- 
ingly. 



C y ' 
V 



of 

Recorded Vol* 20, Page 216. 
o Oo 

PAiira, coLciissioiiiiii.: 

in w Jiidgnent the proposed trade-narli is not open to 
the olDJectlons suggested by the exaBiner. But his objection to 
the language used in applicant's argument is well taKen. Under 
the rules of the Office, the argument in its present form cannot 
iDe admitted to the files of the case. 

"Salvator" for Beer. 



Wt-f vr 



1 



4 



/ 



% 



y 



^u:j 



ALZkllAl.L2I. 
of 

lAlUlIi ^' EERC.Y, 
Decided Ivlarch 25,1880 . 

Reoo rded Vol. 21. P af^eS . 

. -oOo 

DO LITTLE, ACTING COI.EilSSIOlIER: 

The applioant desires to register the v/ord "Vitalized" 
as a trade mark in connection v;ith phosphates and hypophosphates. 

I have some doubt as to this matter, but after careful consid- 
eration, have concluded that the tcmi "Vitalized" is a fanciful 
and arbitrary one. The applicant has discovered no new property 
of phosphates, and they have been always as much "vitalized" as 
they are at present, but. he has drawn them from different sources 
and arranged them in different proportions than he has done before 
and h.as given this name to his compound, by which it has become 
known to the medical profession. It is no objection to a word as 
a trade mark that it is used to attract attention as an advertise- 
ment, if it does not convey a false impression. To all those who 
are acquainted with phosphates and their nature, the word "vital- 
ized" would impress them as having but a fanciful signifieabion« 
It is the nervous system which is claimed to be vitalized by the 



Ki 



I 



\ 



S, R. Percy, Sheet -2- 
use of this compound, and not the compound itself. If tVe term 
has "become descriptive, it is due to the use made of it by the ap- 
plicant, and a term., which, when originally adopted, was not ge- 
neric, if it oecome so during the continued use of the proprietor, 
that fact alo:':e does not render it improper as a trademark, ijf 
such use has been uninterrupted. Ex parte Consolidated Fruit Jar 
Company 16 O.G., G79. 

The decision of the Examiner of Trade Marks is reversed. 



60 



\ 



of 
C.O.MBE & ^Rllii, 

Decided March 29.1880 . 

Recorded Vol. 21, Pa^e 13 . 

oOo 

PAiiTE, coic:igsioner: 

The ?ippl leant s offer as a trade marlc for registration for 
kid-leather the French word "Grison", which means "Gray-head", 
"Gray-board", "Footman in gray livery," "Ass," "Donkey." 

The examiner rejects the application on the ground that inas- 
much as donkey- sic ins are used for leather, the term in its appli- 
cation as a trade mark to kid leather would he descriptive or de- 
ceptive. This objection does not seem to me to l^e well taken. 

If kid leather is gray, every dealer in kid leather has a 
right to describe it as gray (gris). llo trade mark registration 
would be effective to destroy that right. But it does not follow 
that every dealer in kid leather would be entitled, in defiance 
of another's trade mark, to call it "Grison, " "Gray-beard, ""Gray- 
head, " "Ass," or "Donkey." All dealers in blue flannel are enti- 
tled to apply to their goods, in defiance of any registered trade- 
mark, the term "Blue," but not the terms "Blue-beard", "Blue-lawsy 



4o{} 



IB 



2(>1 



m 



Combe & Oriol, Sheet -2- 
•^Blue-stocking, " or "Blue-nose." In all of these oases the desig- 
nations, although more or less related in signification to the de- 
scriptive adjectives "gray" and "blue", respectively, have neverthe- 
less additional arbitrary meaniiigs which qualify tliem for use as 
trade marics. 

The decision of the primary examiner is reversed. 



2() 



/y}tie^ 



APPLlC.AT10.il 
of 

S.ARAH J. Z^UT.2, 

Decided April 15,1880 . 

Recorded Vol, 21. Pa^e 56 . 

oOo 

DOOLITTLE, ACTING C01G.HSSI0IIER: 

The alleged trade narX in this case is, in fact, and should 
be registered, as, a label. The color of the label being old as 
applied to this class 6f articles cannot be registered as a trade 
mark, as it has no distinctive^fAi-ality or signification^ 
The decision of the Examiner is affirmed. 



C\. 



i Modified so far as it relates to the word "Poutz". See Com- 
missioner's endorsement on Ainenfiment of April 20, 1880 in the file,] 



^b^ 



tSIHI 



2G:-i 



I 



i 



i 



b- 






--/^^ 



AZZIilc.A^i.o.K; 

of 

LAU2^ BRO.S.. f: C.O.., 

Decided April 10.1880 . 

Endorsed on Exa m iner's Brief . 

oOg 

DOCLITTLE, ACTIIIG COIvEIISSIOKER: 

Examin. r»s decision affirmed on the same grounds set forth 
in his answer to the reasons of appeal. 

Applicant apparently disclaiins or onits in his specification 
the feature of the bar of soap held in the man's hand. But the 
fac simile shows that feature, and that is evidence that appli- 
cant intends to use it. 



^.^^^ - — ^ "^^ 



2(>.'? 



J^J^ 



fc » 



^: ... ) 



APPLI.C.AT.I.CLK 
of 

Decided April 24, 1880 . 

Recorded Vol> 21, Papie 47. 

oOo 

DOOLITTLE, ACTIITGCOID.IISSIOIIER: 

Applicant desires to register as labels, subject-matter 
properly constituting trade-mar^s. In the case of Simpson & Son, 
(10, O.G.,3SS, ) it T/as decided that such registration could not be 
effected, and the decision in this case cannot be regarded as the 
less binding because the trade-marK'^has been decided to be uncon- 
stitutional. That the subjects to be registered are properly 
trade-marks is evident, and being such, they cannot be labels, and 
therefore are not entitled to the registry provided by law in such 
cases. 

The Examiner's decision is affirmed. 



^ 



k 



'M^. 



Zl 



/I 



i 



APPLICATION 
of 

gol^dixh & C.O.., 
Decided IJay 10.1880. 

Recorded Vol> 31 > Pase 69 . 

oOo 

DOOLITTLE, ACTITTG COLE.USSIOIIER: 

In this case the Coiffinissioner decided Dec. 8, 1879, that ap- 
plicants should not register their present trade marlc (the words 
"Old Judge" on cigars) in view of the previous registration of the 
word "Judge" on cigar "boxes, and cigars, to Chambers and Hirsch 5: 
Co. numbered respectively 4199 and 4801. 

Since that decision applicants have obtained by revocation of 
a previous license, an unqualified assignment of all of Chair^bers* 

right, title and interest in trade marlc -/4199. Of course they 

j 
possessall the right to use said trade mark that Chambers possess- 
ed under his registration, and a further registration of the words 
"Judge" or "Old Judge" on cigars would appear unnecessary for their 
protection. 

Besides such registration cannot be had by applicants without 
an interference with Hirsh <Sc Co's, mark ^801 on cigars. If ap- 
plicants were the assignees of the latter named owners I think 



26t) 



^u 



GoodY/in 5c Co.,Glieet -2- 
they might register their word "Old Judge" on cigars, as the stat- 
utat; although it prohibits this Office from registering a trade- 
mark belonging to a different ovmer, dO(3s not prohibit the same 
owner from re-registering his maris, if thereby he can by a correc- 
tion in description better protect his OT/n rights and at the same 
time not injuriously affect the rights of others. 

Application denied in view of Hirsh & Go's, registration as 
above set forth. 



i 






2(5 1) 



^■^ 



i 



of 

§. llilE HERNSHEIIT & BRO.T.HER, 
Decided Ivlay 21, 1080. 

Recorded Vol. 21, Pap;e 98 . 

oOo 

IJIARBLE, COIiinSSIOKER: 

Applicants in this case seeX to register the designation 
" 'Alf and 'Alf" as a trade-marlc for cheTring aid smoking tobacco, 
cigars and cigarettes. 

The Examiner has denied the registry as to all the arti- 
cles mentioned, except chewing tobacco, upon the ground that it is 
in conflict with and is anticipated by a prior certificate of reg- 
istration issued to F. S. IQnney July 6, 1875. Kinney's register- 
ed trade-mark, as his specification states, "consists of two fig- 
ures, 1/2, 1/2, each expressing the number one-half and joined by 
the character &,» 

Section 4939 of the Revised Statutes prescribes "that 
the CoimTiiBGioner of Patents shall not receive and record any pro- 
posed trade-mark XXX which is identical with a trade-mark appro- 
priated to the same class of merchandise, and belonging to a dif- 
ferent owner and already registered, or received for registration, 



J^ 



Hernshein & Brother, Shoot -2- 
or which so nearly resembles said last mentioned trade-mark as to 
be lively to deceive the public." The expression " 'Alf and 'Alf" 
is but a well known corruption of the words "Half and Half," its 
signification is the same, and the difference in the sound of the 
words when spoken is not an appreciable one. It is this express- 
ion that registrant Kirmey has indicated by. his peculiar mark, and 
these are the words that would naturally be used by purchasers in 



asking for this particular brand. The mere fact that the two marks 
when seen are distinguishable does not indicate a sufficient dif- 



ference, for the brand, should it once become popular, will be as 
well known by its name as the peculiar appearance of the mark upon 
it. (Cogsin, Kidder 5: Co., 11 O.G., 1109; American Lubricating 
Oil Co., 9 O.G., G77; Jules E. Caire, 15 0,G,, 248.) 



For this reason the Office has repeated/refused to reg- 
ister the words "Star", "Boquet", and the like, where correspond- 
ing symbols had before been employed. In my opinion the mark em- 
ployed by the applicant so nearly resembles that of the registrant 
Kinney that the public v;ould be deceived thereby. 

The decision of the Acting Examiner of Trade-Marks is 
therefore affirmed. 



\ 



r»0 



268 






t 



;t 






A LL k 1 2 A 1 L 0_^ 
of 

Decldod May 22, 1080. 

Reoorded Vol. 21, Page 9G. 
oOo 

MARBLE, coiaa SSI oner: 

In this case the decision of the Exainii^er is affirmed 
for the reasons stated in his decisions of April 20" and 26", 
1880. 




1 



^60 



ite.' • U 



t'^ § 



APPLI.^AT10.N 

Of 
M. J. F U Z Z A R D, 

De 1 do d May -S-^^ 1880 , 

Reoorded Vol, 21, Page 120 , 

oOo 

MARBLE, COlCvII SSI oner: 

The decision of the Examiner in this case is affirmed. 



^ ■ \J 



i| 



4^^.sMi 



^ 



AZ£Iilc.AXi.o.N 
of 

1- li- G R E E N B A U M, 
Dcoldea I.Iay 35, 1030. 

Recorded Vol> 21» Pa^e 111. 

oOo 

MARBLE, COivLII SSI otter: 

Applicant in this case seeks to register as a label a 
printed slip having upon one side arranged as below the following 

words: 

"Pure Excelsior Jewelery. 



WARRANTED. 
TRADE IvIARK:. I X L.« 

Upon the reverse side of this slip is certain printed 
matter coiniT.ending the "Excelsior Jewelery" to the public. 

The Examiner has refused the registration upon the ground 
that applicant's label embraces proper subject-matter, if not an- 
ticipated, for tTade- -mark registration, and in support of his po- 
sition has referrred to the Comrriissioner 's decision in the case of 
Simpson and Sons, 10, O.G., 333. I canr.ot agree with counsel for 
applicant in his a ssertion that this is an obsolete decision. It 



\^ 4 



iv^ 



^4 



S.H.Greenbaun, Sheet -2- 
was based upon the former decisions or the Comiiissioner in the 
cases of A, Godillot, CD., 1874, p. 122, and Orcrutt and Son, CD. 
1875, p. 102, and has been approved in the cases of J. D. Park, 12 
O.G., 2; T. Davis and Co., 16 O.G., 94, and in the recent case of 
P. Lorillard, April 24, 1880, MS. Decisions, Vol. 21, p. 27. These 
decisions are clearly in point in this case, and in my judgment 
rightly expound the lav/ and fully sustain the Examiner's action. 

The obvious purpose of the act of June 18, 1874 (chapter 
spi, section 3) vras to supplement, and not in any v/ay to super- 
sede, the provisions of the statute relative to the registration 
of trade-marlcs, and construing these statutes together I am of the 
opinion that matter which is capable of registration as a trade- 
mark cannot be protected as a label. 

The fanciful word "Excelsior" and symbol "I.X.L." are 
obviously proper matter for trade-mark registration, and separated 
as they are in the present instance from all printed matter de- 
scriptive of the contents of the package or articles to which the 
slip is to be attached would undoubtedly convey to the public the 
false impression that these fanciful designations as associated 
with jewelry, and not merely the slip with its printed description 

are the object of protection. 

Yhe decision of the Examiner is afxirmed. 



<«;/ f AW 



1 



^ 



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1 



! 



AZZIi1C.atxo,h; 
of 
E. H. 1 A Y L ^ R J R. C. 0,. , 

Deoidod Aug;. 10, 1880 . 

Recorded Vol. 21, Papre 504 . 

oOo 

MARBLE, comri SSI oner: 

I agrei: with the Examiner that the corporation applicant 
in this case has failed to comply with the requirements of the 
statute in not stating the length of time during v/hich the marl: 
has been in use, but with the other formal requirements there has 
been a substantial compliance. 

I must affirm the decision of the Examiner in refusing 
registration of the word "Carlisle", this being a geoBraphical 
term. L^ vievjs in cases of this character arc fully set forth in 
the decision rendered August 10th, in the case of ex parte Earnum 
and Co., and need not be repeated hereo 



^^^ 




AZ£IiXC.ATiO.N 

of 

E. H. 1AYL0.R JR.,^0.., 

DecldGd July 9. 1881, 

Recorded Vol> 22, PaF:e 245. 

oOo 

MARBLE, coj.£:issiojier: 

The examiner of trade marJLs requests instructions upon 
the application of E. H. Taylor Jr., Co., for the registration of 
the word "Carlisle" as a trade-marlc for whisl:ey« 

A li}:e application was heretofore made by the same party 
and 7/as rejected by my decision of August 10, 1880, for the reason 
that the word "Carlisle" was a geographical term. The attorney of 
applicants files a motion for reconsideration of that decision 
under the law of Llarch 3, 1881. Technically, the motion should 
not be considered, because the lav/ under whidi the office v,'as in 
1880 receiving and registering trade-marks no longer is used as a 
basis for the registration of trade marks according to the forms 
of law. The law under which the former application v/as filed hav- 
ing ceased to be used for any purpose, a motion for the reconsider- 
ation of the case decided prior to the act of March 3, 1881, has 
no standing, because with the law, or the use that was made of it. 



:^^^ 



Cii 



f 



4 



E.H.Taylor Jr., Co., Sheet -2- 
fell all proceedings •ander.lt, 

A trale-marlc, however, is a trade-marX without any stat- 
utory'- law; tlie statute simply gives protection to persons who 
have adopted some device, word, o:c.,aG a trade-mark, properly re- 
cognized and treated as such. There is no difference in the es- 
sentials of a trade-marl: under the act of March 3, 1881 which did 
not exist before the passage of that act. What ?7as a trade-marX 
therefore before its passage is a trade-mark now, and what was not 
then a trade-mark is not now a trade-mark. 

So far as I ain able to learn, ge'ographical terms have 
never been held to be good trade-marks. Undoubtedly there are 
cases where words with a geoeraphioal signification have boen re- 
ceived and registered as trade-marks, "out such has not beei: the 
usual practice, nor are such v/ords, except in peculiar cases, 
properly registrable as trade-marks. 

The v7ord "Carlisle" has a geographical signification in 
this country, and all persons living in either of the cities of 
that name have the right to make and use such articles of merchan- 
dise as they please, the making and using of \^ich are not in vio- 
lation of law. 



I knoT/ of no reason why any particular pcjrson should 



■dTo 



E.H.Taylor Jr., Co., Sheet -3- 
have the protection, or semblance of protection, to the use of 
that word to the exclusion of others in the manufacture and sale 
of whiskey, or any other merchantable product. 

The reasons v/hich have uniformly been given by this Of- 
fice for the rejection of applications on the ground that the 
tenns used were geographical, it seems to me are correct, and 
should still be adherred to. 

The motion to re-open the former case is denied , and 
the Examiner is instructed to continue the same practice which has 



heretofore prevailed in cases like the one presented. 



27« 



4 



AP?IilC.AXI.O.N 
Of 
!• H- I. A Y L ^ R J R. C. 0.. , 

Deolcied Aw?. 17, 1831 . 

Recorded Vol. 22, Pa^e 511. 

oOo 

WARBLE, COimiGSIOlIER: 

Applioant seelLs to register the word "Carlisle" as a 
trade-mark on whiskey raanufaotured and sold by it. The examiner 
of Trade-Marks refused the registration in acoordanoe with my de- 
cisions of Aug. 11, 1880 and July 9, 1881. Both of said decisions 
proceed upon the idea that the word "Carlisle" has a geographical 
signification, and hence is not registrable as a trade-mark. 

Upon further consideration and inquiry into the case, I 
am satisfied that, while the principles announced in said decis- 
ions are correct in a case to v/hich they properly apply, the facts 
in this case do not warrant the conclusion that the v;'ord "Carlis^" 
has any geographical signification. The company which has adopted 
that word as its trade-ipark has its principal place of business at 
Frankfort, Kentucky, and with the word "Carlisle" there is given 
to the public not only the kind of whiskey upon which it is used 
but the place where it is distilled. V/liile there are many places 



Kt' 



, $ o 



E.H.Taylor Jr. Co., Sheet -2- 
in this Gountry nainod Carlisle, there is no attempt to connect any 
such place with the manufacture or sale of this whiskey. As used 
here the word has an arbitrary character without signifying either 
the name of a place or of a person. Words when so used, although 
they iaay be names of persons or places, if distinct and separate 
from persons and places, I think are registrable as trade-marks. 
The vievrs heretofore expressed vvith reference to this 
particular trade-mark, are therefore overruled, and the petition 



of applicant is allowed. 



« ^ 



1 



m 



t^' 6 



L 



AZPL1C.AT10LN. 
Of 
R All ^ PARKE R,__ 

Decided July 15, 1880 . 

Reoordoa Vol. 21. Papie 244 . 
oOo 

MARBLE, coi.cn SSI oner: 

Applicant's appeal is somewhat indefinite and is not in 
proper form, as his purpose appears to be simply to obtain the 
privilege of having the case re-opened, in order to correct his 
specification. This the Examiner can allow without an appeal. 

To avoid the possible necessity, however, of considering 
at a future time the question raised by the Examiner's objection 
of the case upon its merits, I may state now my approval of his ac- 
tion in refusing the registration. The essential features of the 
marX are stated to be the v^-ords "Parker's Bronchial Lung a .d Liver 
Pad Combined." The statute (Sec. 4939, R.S. ) expressly provides 
that "The Comi-iission of Patents shall not receive and record any 
"proposed trade-mark 7/hich is not and cani'.ot become a lawful trade 
"mark, or which is merely the name of a person, firm, or corpora- 
"tion unaccompanied by a mar'K sufficient to distinguish it from 
"the same name v^hen used by other persons, &c." The name Parker's 



^ 4 



'49U 



D. Parker, Shoot -2- 
is not, therefore, one which of itself can present proper subject- 
matter for resistration. The vrords "Bronchial Lung and Liver Pad 
Combined" are clearly descriptive, and, sucli being the case, can 
be used with equal truth, and, consequently, with equal right., by 
any other manufacturer of such combined pads. 

The courts and the office have repeatedly denied the va- 
lidity of such narks. (Newman V. Alvord, 49 Barb., 588; Brooklyn 
White Lead Co. v. Masury, 25 Barb., 41G; Canal Co. v. Clark, 1 
O.G., 279.) 

Under the section of the statute above quoted, the word 
"Parker's" is clearly not entitled to registration, and since the 
accompanying words are merely terms of description, they cannot 
be said to be "sufficient to distinguish it from the same name when 
"usecl by other persons." 

The decision of the Examiner of Trade-Marks is according- 



ly affirmed. 



:^v 



I 



APPiilC.AT.I.C.11 
of 

£^HN W. C.ARR^L L,_ 
Decided Aup;. 11, 1880 . 

Reoordcd Vol. 31, Par,e 514 . 

oOo 

MARBLE, CCIC.IISSIOITER: 

Since this appeal was taken counsel for applicant has 
filed a certified copy of a decision rendered in a case of Carroll 
V. Etheilcr, by Butler, Justice, in the Circuit Court for the Eas- 
tern District of Pennsylvania. As it is claimed that this decis- 
ion should determine the action of the office, it is properly 
coGnizable by the examiner in the first instance, and the case is 
accordingly remanded to him for his further consideration. 



CO 



ALL k L ^ A IL 0^ 
of 

BUC^HANAM^IiYALL, 

Decided Pot. 12,1800 . ^ ^ ■ 

Recorded Vol. 15, Pap^e 597 . 

oOo 

IIARBLE, COi.EJISSIOTIKR: 

Applicants in their specification state that "the essen- 
"tial feature of the trade-marl?: consists of the border, three sides 
"of v/hich are forraed of representations of larger and smaller sizes 
"of plus tobacco, while the fourth or upper side forms a kind of 
"open panel for the firm name o:c.,all as shov;n." This is designed 
as a trade-marx for plug and fine CLit snoXing and chewing tobacco. 
The Examiner hn.s denied the registration upon the ground that this 
mark "is not an arbitrary symbol, but a purely descriptive one for 
"the simple reason that it is a very cominon expedient for trades- 
"men to affix to boxes and packages containing their goods descrip- 
"tive symbols of what is contained therein." 

Undoubtedly any manufacturer of tobacco t;70u1c1 be enti- 
tled to stamp upon his packages symbols descriptive of the arti- 
cles contained therein. Applicants have, however, done something 
more than this. They have arranged these descriptive symbols into 



.CO, 



^^' 



Buchanan & Lyall, Sheet -2- 
an arbitrary design, which, in my jucLginent, when ppiaced upon 
their wares will serve to readily distinguish them from the goods 
of another. This design will accomijlish the office of a valid 
trade-mar^, and applicants are entitled to the registration asked. 
The decision of the Examiner of Trade-LIarKs is reversed. 



/ 



^^, 



i 



L. 



APPL1C.ATI.0.N 
Of 

E. A1C.HERMA lOI 4 2 9.- 7 

Decided Oct. 12, 1080 . 

Recorded Vol. 21, Pap.e 596 . 

^^-oOo 

MARBLE, COlvCnCSIONER: 

Applicants in this case seek to register the v;ords 
•♦Blunt Heads" as a trade-marlc for cigars. The Examiner has de- 
nied the registry upon the ground that these 7/ords are descriptive 
This case is analogous to that of ex parte Ilayman, decided May 51, 
1880, (MS. appeal cases.) In ray judgment the primary significa- 
tion which the public would attach to these words would be a fan- 
ciful, and not a descriptive one, and they vrould, therefore, ful- 
fill the office of a valid tracle-marls: in aisting'iishing in the 
market the particular goods upon which they were placed. 

The decision of the Examiner of Trade-Marks is reversed. 



.28; 



of 

MAURI.C.E GAITDY, 

Decided Cot. rJ2, 1080 . 

Recorded Volo 21 « Pap:e 407 > 

oOo 

MARBLE, COmil SSI oner: 

Applicant in his specification states that "the essen- 
"tial elements of his trade-marl^ consist of the figure of a coil of 
"beltirig with a pale of cotton laid across it and the r;ords "^zm- 
"dy's Belting" printed upon the bale." The Examiner has withheld 
the resistration for the reason that, in his judgment, the v/ords 
"Candy's Belting" cannot properly be said to constitute an essen- 
tial feature of the mark. The attorney for applicant appears to 
regard these words as essential in order that the marR may proper- 
ly indicate origin or ownership of the goods to v.'hich they are to 
be attached. In this regard I thinly he is clearly in error. 

I had occasion to state in the recent case of Parnham & 
Co., 18 G. , 412, that the essential features of a trade mark are 
those only which serve in whole or in part to distinguish the good^ 
of the party by Y;hom such mark is adopted, and it is not proper 
that anything should be described as essential ¥:hich the courts 



2b 



8(> 



M, Gandy, Sheet -2- 

would hold other\"iae. 

As stated by Commissioner Leggctt in the case of the 

Dutoher Temple Co. , CD. , 1871, p. 248, "A careful reading of the de- 
"cisions will sho^v that the courts have held with very great una- 
"nimity that the person's natne or place are neither absolutely es- 
"sential to the validity of a trade-inarK. If it possesses the ev- 
"idence on its face that it is put forth or given out as a distin- 
"guishing marK of the goods to which it is attached, that is, dis- 
"tinguishing as to origin and not as to kind or quality, it may 
"have all the requisites of a valid trade-mar!k without naming the 

"person or place whence it came« The very fact that it bears evi- , 

I 
"dence of its being the manufactiirer's or dealer* s private marX by 

"means of which his goods are distinguished in the market is suf- 

"ficient indication of origin to warn against copying by competing 

"dealers and this answers the public demand." (See also Brown on 

Trade-Marks, Section 151.) 

Section 4939 of the Revised Statutes prescribes "That 

"the Commissioner shall not receive and record any proposed trade- 

"mark v;hich is not and can.:0t become a lawful trade-mark, or \?hlch 

"is merely the name of a person, firm, or corporation unaccompanied 

"by a mark suf iTioient to distinguish it from the same name Trhen us- 



28b 



I 



Jl 



2S\ 




M. Gan.:Jy, She(=!t -3- 
"ed by other persons." 

It is this mark V7hich acoompGnles the name and serves 
to distinguish it frora others that constitutes the essential fea- 
ture of the trade-marX. Indeed, counsel for applicant in his ar- 
gument would seuin to admit as inuch, for he states that "another 
"person of the name of Gandy might engage in the manufacture of 
"belts and would have the right to stamp upon his goods "Gandy's 
"Belting" without infringing the tracie-mark, but if he stamped on 
"his goods the figure of a coil of bolting with the figure of a 
"bale of cotton laid across it and the v/ords on the figure, he 
"would infringe the trade-mark, because he v;ould then use the ac- 
"companying marks that distinguish the other malcer's name from. his 



" OY/n . " 



I cannot, thei'efore, regard the words "Gandy's Bolting" 



as in any way essential. Ifapplicant is not entitled to the mark 
without these words, then, under the ver^'" terms of the statute, as 
well as admissions of counsel, he could not bo entitled to them 
with the words, for there would be nothing sufficient to distin- 
giiiish applicants mark when used by other persons having a like 
name, and consequently an equal right thereto. 



There is here no combination, as urged by counsel, bo- 



2SJ 



:(5^ 



^8 



M. Gandy, Shoot -4- 
tween the name and peculiar mark employed. The t7;o would be re- 
garded as totally distinct, the words indicating the manufactur- 
er's name and the article made, and the symbol constituting the 
fanciful mark by which such goods were to be distinguished in the 
market. (See Brown on. Trade-Marks, Section 346). 



The decision of the Examiner of Trade-Marks is affirmed. 



c?o 



^o 



^uu 



/C^^ 



APPLlC.A?I.j01£ 
of 

Decided Deo. 10.1880. 



Recorded Vol. 21. Faf^e 482 



llARBLE, C01.E.II SSI oner: 

I have no doul)!, that the word "Premimii" is fanciful and 
that the XXXX are arbitrary and together constitute a lavfful trade 
marlc. This being the case, the whole cannot be registered as a 
label under the act of June IG, 1874. 

The cases cited by the Examiner in his answer, each and 
all of thein, cover the case. The matter has been so often decided 
that I. refer those cases as a more full discussion of the ques- 
tions herein raised. 



The decision of the Examiner is affirmed. 



CUM 



WW 



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292 



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